Case 6:20-cv-01212-ADA Document 20-2 Filed 04/09/21 Page 1 of 11
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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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`NXP Semiconductors N.V., et al.,
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`Defendant.
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`Civil Action No.: 6:20-cv-1212-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 NXP USA, INC’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-01212-ADA Document 20-2 Filed 04/09/21 Page 2 of 11
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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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`A.
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`NXP Mischaracterizes Federal Circuit Authority on Section 271(g) .............................. 1
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`The ’402, ’538, ’305, and ’248 Patents Are Directed to the Manufacture of Products and
`B.
`Are Encompassed Within the Scope of Section 271(g) .............................................................. 2
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`1.
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`2.
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`3.
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`4.
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`The ’402 Process Is Used in the Making of Semiconductors ....................................... 3
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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 ................. 4
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`NXP Misapplies the Case Law ..................................................................................... 4
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`C.
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`Fact Issues Should Preclude Dismissal of Ocean’s Section 271(g) Claims ..................... 5
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`NXP Concedes that, at Worst, Leave to Amend Should Be Granted Rather Than
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`Dismissal ..................................................................................................................................... 6
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`III. CONCLUSION .................................................................................................................... 6
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`i
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`Case 6:20-cv-01212-ADA Document 20-2 Filed 04/09/21 Page 3 of 11
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
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`Bayer AG v. Housey Pharms, Inc.,
`340 F.3d 1367 (Fed. Cir. 2003) .............................................................................................. 1, 5
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`Bio-Tech. Gen. Corp. v. Genentech, Inc.,
`80 F.3d 1553 (Fed. Cir. 1996) .................................................................................................... 5
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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) ...................................................................... 6
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`Momenta Pharms., Inc. v. Teva Pharms. USA Inc.,
`809 F.3d 610 (Fed. Cir. 2015) ................................................................................................ 1, 5
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`Ormco Corp. v. Align Tech., Inc.,
`653 F. Supp. 2d 1016 (C.D. Cal. 2009) ...................................................................................... 6
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`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) .................................................................................................. 4
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`ii
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`Case 6:20-cv-01212-ADA Document 20-2 Filed 04/09/21 Page 4 of 11
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`I.
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`INTRODUCTION
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`NXP’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 NXP’s Motion
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`to Dismiss. When properly analyzed both factually and legally, it is clear that the methods of the
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`asserted patents fall squarely within the coverage of § 271(g). At worst, fact issues relating to
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`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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`NXP Mischaracterizes Federal Circuit Authority on Section 271(g)
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`NXP misconstrues Bayer when it argues that it “requires that the claimed process itself
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`manufacture a physical product.” (Dkt. 19 at 1.) Bayer holds no such thing. The language from
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`Bayer cited by NXP relates to the question of whether information developed using a patented
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`process is itself a “product” within the scope of § 271(g), such that importation of that
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`information is an infringement. Bayer AG v. Housey Pharms, Inc., 340 F.3d 1367, 1370-71
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`(Fed. Cir. 2003). The court in Bayer held that the importation of such information was not
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`importation of a “product,” because information is not “manufactured” at all. Id. at 1377. Here,
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`on the other hand, what is imported is not information, but the physical products that are
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`manufactured using the patented processes.
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`NXP’s continued reliance on Momenta (Dkt. 15 at 2-3) 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 products
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`1
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`Case 6:20-cv-01212-ADA Document 20-2 Filed 04/09/21 Page 5 of 11
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`on which the claimed method had not been performed survived to be developed into final
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`products, and later imported and sold.
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`Here, however, the patented methods recited in the ’402, ’538, ’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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`Nor does Eli Lilly support NXP’s position. That Congress chose not to include “directly”
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`in the statute in the context of debate over a provision not at issue here is of no moment. What
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`matters is that there is no requirement under § 271(g) that a product be made “directly” from a
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`patented process in order for there to be infringement. (See Dkt. 18 at 3.) Bayer and the other
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`authorities cited in Ocean’s Opposition confirm and further illustrate this legal tenet. (Id. at 4.)
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`Accordingly, while processes that produce information, such as those at issue in Bayer, lie
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`beyond the scope of § 271(g), processes used in the creation of semiconductors fall within that
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`scope—and the case law does not preclude their protection.
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`Finally, there is nothing inappropriate in Ocean’s reliance on a well-established treatise—
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`Chisum—as an accurate restatement of the law for the propostion that “[t]he connection between
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`a patented process and its product can vary from immediate . . . to remote.” Indeed, NXP does
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`not appear to disagree with this statement, which it characterizes as “obvious.” (Dkt. 19 at 1-2.)
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`B.
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`The ’402, ’538, ’305, and ’248 Patents Are Directed to the Manufacture of
`Products and Are Encompassed Within the Scope of Section 271(g)
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`As an initial matter, NXP’s claim that “Ocean’s arguments as to the ’402 and ’538
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`patents (and for that matter, the ’305 and ’248 patents) are essentially identical” (Dkt. 19 at 3) is
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`false. Moreover, Ocean has not asserted that each of the patents is encompassed by § 271(g)
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`solely because the claimed processes “relate” to the production of semiconductors. (Dkt. 19 at 3-
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`4.) Rather, in accordance with Bayer and other precedent, Ocean has looked to the claims and
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`the specifications of the patents themselves and has identified aspects of each process
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`2
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`Case 6:20-cv-01212-ADA Document 20-2 Filed 04/09/21 Page 6 of 11
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`demonstrating that the claimed processes result in the making of physical products. (Dkt. 18 at
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`3-5, 6-8, 9-11.) This is more than sufficient.
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`1.
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`The ’402 Process Is Used in the Making of Semiconductors
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`Contrary to NXP’s inaccurate contention that the ’402 patent’s claimed process “do[es]
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`not create a physical product” (Dkt. 19 at 5), the invention of the ’402 patent is directed to
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`methods and systems for manufacturing products (e.g., silicon wafers) by controlling processing
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`tools (e.g., steppers) within a factory automation system. Indeed, NXP simply ignores the fact
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`that a “predetermined action on a processing tool,” as recited in method claim 1, is an action
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`performed during manufacturing. NXP also ignores the fact that the patented method involves
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`(as provided in the specification), for example, minor adjustments to the tool or process recipe
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`used to manufacture the semiconductor wafers. There can be no legitimate doubt that the
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`claimed methods are used in the manufacture of physical products, namely semiconductor
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`wafers. This direct relationship between the patented process and the accused products is more
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`than sufficient to withstand a motion to dismiss.
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`2.
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`The ’538 Process Is Used in the Making of Semiconductors
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`In the same vein, NXP’s contention that the claims of the ’538 patent “do not create a
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`physical product” (Dkt. 19 at 5) is contradicted by the unequivocal statement in the ’538 patent
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`that its fault detection method is “related to processing of a subsequent workpiece,” (Dkt 1-8 at
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`13:38), as well as by numerous other passages cited in Ocean’s Opposition. (See Dkt. 18 at 6-7.)
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`These disclosures cannot simply be ignored as NXP would like this Court to do.
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`Nor has NXP cited any authority for its creative proposition that Ocean’s reliance on
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`multiple claims and the specification of a patent is somehow improper for the purpose of
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`determining the applicability of Section 271(g). (Dkt. 19 at 4-5.) In fact, claims are always
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`3
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`Case 6:20-cv-01212-ADA Document 20-2 Filed 04/09/21 Page 7 of 11
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`construed in light of the entirety of the patent’s disclosure, including the specification and other
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`claims. Phillips v. 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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`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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`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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`NXP’s argument that the ’305 and ’248 patents “are limited to scheduling” (Dkt. 19 at 6)
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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. 18 at 9-11) 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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`4.
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`NXP Misapplies the Case Law
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`Of a piece with its superficial description of the ’538 and ’402 patents, NXP’s recitation
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`of applicable law contains numerous mischaracterizations and unsupported conclusions. It
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`would be impossible for the drug product discussed in Bayer to be made by “a predicate process
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`to identify the product to be manufactured.” Bayer, 340 F.3d at 1378. Hence, Bayer’s
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`distinction between processes that produce only information and those, like the ’402 and ’538
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`processes, that produce physical products such as semiconductors. See id. at 1372. NXP’s
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`attempt to blur this legal distinction should be rejected.
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`Case 6:20-cv-01212-ADA Document 20-2 Filed 04/09/21 Page 8 of 11
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`Similarly, Momenta offers zero support for NXP’s nebulous proposition that “an
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`important relationship to manufacturing is not enough under § 271(g).” (Dkt. 19 at 5.) Again,
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`Momenta drew a line that excluded testing processes that were never used on units of product
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`subsequently imported and sold. Momenta, 809 F.3d at 617. In contrast, by detecting fault
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`conditions during processing of a wafer, the ’402 and ’538 patented methods fall on the
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`opposite side of that line. So too the ’305 and ’248 methods, which schedule wafer fabrication
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`steps during the manufacturing process.
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`NXP’s convoluted reading of Bio-Tech Gen. (Dkt. 19 at 5) also fails. Contrary to NXP’s
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`implication, even patented processes that were not explicitly addressed by Congress in § 271(g)’s
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`legislative history can enjoy the protection of that section. There is nothing in the text of Bio-
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`Tech. Gen. to suggest that a process must autonomously “create” a product in order to be
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`encompassed within the scope of § 271(g). Rather, the Federal Circuit recognized that the patent
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`at issue “explicity contemplate[d] that the patented process will be used as part of an overall
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`process for producing hGH . . . .” Bio-Tech. Gen. Corp. v. Genentech, Inc., 80 F.3d 1553, 1561
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`(Fed. Cir. 1996).1
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`C.
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`Fact Issues Should Preclude Dismissal of Ocean’s Section 271(g) Claims
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`While NXP takes pains to argue that the Court should not consider the factual question of
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`whether a patented process contributes to the commercial viability of a product (Dkt. 19 at 6-7),
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`it once again relies on selective and misleading case law quotations. For example, in Ormco, the
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`court stated that it “agrees that the issue of commercial viability is not, based on the authority
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`cited by Ormco, dispositive, but nevertheless considers it herein as one relevant factor.”
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`Ormco Corp. v. Align Tech., Inc., 653 F. Supp. 2d 1016, 1026 n.1 (C.D. Cal. 2009). In other
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`1 Unless otherwise noted, emphasis within this brief has beenadded..
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`Case 6:20-cv-01212-ADA Document 20-2 Filed 04/09/21 Page 9 of 11
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`words, whether or not commercial viability is a dispositive issue with respect to § 271(g), it is
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`nevertheless relevant and should be considered.
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`Related to this, it does not appear that the courts in Bayer and Momenta were ever even
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`asked to address the issue of commercial viability. The quote from Millenium Cryogenics that
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`NXP argues (Dkt. 19 at 7) was incomplete in Ocean’s Opposition means the same thing whether
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`or not the extra language is inserted. Either way, the issue of whether a product is “made by” a
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`process is still a question of fact. Millennium Cryogenic Techs., Ltd. v. Weatherford Artificial
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`Lift Sys., Civil Action No. H-12-0890-KPE, 2012 U.S. Dist. LEXIS 196638, at *8 (S.D. Tex.
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`2012). The language omitted from Ocean’s brief simply states that the separate issue of whether
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`a product has been materially changed—an issue that is irrelevant for the purposes of the present
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`motion—is also one of fact.
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`In sum, none of the cases discussed in NXP’s Reply suggest that a court should not, or
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`may not, consider factual issues related to § 271(g) on a motion to dismiss.
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`D.
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`NXP Concedes that, at Worst, Leave to Amend Should Be Granted Rather
`Than Dismissal
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`NXP entirely fails to address the final section of Ocean’s Opposition (see Dkt. 18 at 12).
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`As such, NXP concedes that at worst the Court should grant leave to amend the Complaint rather
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`than dismissing the Complaint outright. Of course, given the numerous other flaws in NXP’s
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`motion, it should be denied in its entirety.
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`III. CONCLUSION
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`For all of the reasons stated above and in Ocean’s Opposition, NXP’s Motion to Dismiss
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`should be denied.
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`Case 6:20-cv-01212-ADA Document 20-2 Filed 04/09/21 Page 10 of 11
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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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`7
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`Case 6:20-cv-01212-ADA Document 20-2 Filed 04/09/21 Page 11 of 11
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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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`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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`8
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