Case 6:20-cv-01214-ADA Document 20 Filed 05/04/21 Page 1 of 4
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`
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`
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`Civil Action No.: 6:20-cv-1214-
`ADA
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`JURY TRIAL DEMANDED
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`PATENT CASE
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`Plaintiff
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`Defendant.
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`Ocean Semiconductor LLC,
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`
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`v.
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`Silicon Laboratories Inc.,
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`JOINT CASE READINESS STATUS REPORT
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`Plaintiff Ocean Semiconductor LLC (“Ocean” or “Plaintiff”) and Defendant Silicon
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`Laboratories Inc. (“Silicon Labs”) hereby provide the following status report in advance of the
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`initial Case Management Conference (CMC).
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`FILING AND EXTENSIONS
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`Plaintiff’s Complaint (Dkt. 1) was filed on December 31, 2020. There has been one
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`extension for a total of forty-five days.
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`RESPONSE TO THE COMPLAINT
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`Silicon Labs has not filed an Answer. Instead, Silicon Labs filed a Motion to Dismiss for
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`Failure to State a Claim (Dkt. 14) on March 12, 2021. Silicon Labs’ Motion to Dismiss requests
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`that the Court dismiss Ocean’s (i) infringement claims under 35 U.S.C. § 271(g) for U.S. Patent
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`Nos. 8,676,538 (the “’538 patent”), 6,725,402 (the “’402 patent”), 6,907,305 (the “’305 patent”),
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`and 6,968,248 (the “’248 patent”); (ii) induced infringement claims for all asserted patents; (iii)
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`willful infringement claims for all asserted patents; (iv) infringement claims concerning tools and
`1
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`
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`
`
`
`
`Civil Action No.: 6:20-cv-1214-
`ADA
`
`JURY TRIAL DEMANDED
`
`PATENT CASE
`
`Plaintiff
`
`Defendant.
`
`
`Ocean Semiconductor LLC,
`
`
`
`v.
`
`Silicon Laboratories Inc.,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`JOINT CASE READINESS STATUS REPORT
`
`Plaintiff Ocean Semiconductor LLC (“Ocean” or “Plaintiff”) and Defendant Silicon
`
`Laboratories Inc. (“Silicon Labs”) hereby provide the following status report in advance of the
`
`initial Case Management Conference (CMC).
`
`FILING AND EXTENSIONS
`
`Plaintiff’s Complaint (Dkt. 1) was filed on December 31, 2020. There has been one
`
`extension for a total of forty-five days.
`
`RESPONSE TO THE COMPLAINT
`
`Silicon Labs has not filed an Answer. Instead, Silicon Labs filed a Motion to Dismiss for
`
`Failure to State a Claim (Dkt. 14) on March 12, 2021. Silicon Labs’ Motion to Dismiss requests
`
`that the Court dismiss Ocean’s (i) infringement claims under 35 U.S.C. § 271(g) for U.S. Patent
`
`Nos. 8,676,538 (the “’538 patent”), 6,725,402 (the “’402 patent”), 6,907,305 (the “’305 patent”),
`
`and 6,968,248 (the “’248 patent”); (ii) induced infringement claims for all asserted patents; (iii)
`
`willful infringement claims for all asserted patents; (iv) infringement claims concerning tools and
`1
`
`
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`Case 6:20-cv-01214-ADA Document 20 Filed 05/04/21 Page 2 of 4
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`fabs not identified in the Complaint; (v) infringement allegations relating to claim 1 of 6,660,651
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`(the “’651 patent”); and (vi) infringement claims against all accused products for all asserted
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`patents. Ocean filed its Response to the Motion to Dismiss (Dkt. 16) on March 25, 2021, and
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`Silicon Labs filed its Reply (Dkt. 17) on April 1, 2021. On April 8, 2021, Ocean filed an
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`Unopposed Motion for Leave to File Sur-Reply in Opposition to Defendant Silicon Labs’
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`Motion to Dismiss for Failure to State a Claim (Dkt. 18).
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`PENDING MOTIONS
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`Currently pending before this Court are Silicon Labs’ Motion to Dismiss for Failure to
`
`State a Claim (Dkt. 14) and Ocean’s Unopposed Motion for Leave to File a Sur-Reply In
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`Opposition to Silicon Laboratories Inc.’s Motion to Dismiss for Failure to State a Claim (Dkt.
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`18). The briefing for both of these motions is completed and they are ready for resolution.
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`RELATED CASES IN THIS JUDICIAL DISTRICT
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`1.
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`Ocean Semiconductor LLC v Mediatek Inc. and Mediatek USA Inc., Civil Action
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`No. 6:20-cv-1210-ADA (W.D. Tex.)
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`2.
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`Ocean Semiconductor LLC v. NVIDIA Corporaton, Civil Action No.: 6:20-cv-
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`1211-ADA (W.D. Tex.)
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`3.
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`4.
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`Ocean Semiconductor LLC v. NXP Semiconductors N.V., NXP B.V. and NXP
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`USA, Inc., Civil Action No.: 6:20-cv-1212-ADA (W.D. Tex.)
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`Ocean Semiconductor LLC v. Renesas Electronics Corporation and Renesas
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`Electronics America, Inc., Civil Action No.: 6:20-cv-1213-ADA (W.D. Tex.)
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`5.
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`Ocean Semiconductor LLC v. STMicroelectronics, Inc., Civil Action No.: 6:20-
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`cv-1215-ADA (W.D. Tex.)
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`6.
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`Ocean Semiconductor LLC v. Western Digital Technologies, Inc., Civil Action
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`No.: 6:20-cv-1216-ADA (W.D. Tex.)
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`2
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`Case 6:20-cv-01214-ADA Document 20 Filed 05/04/21 Page 3 of 4
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`IPR, CBM, AND OTHER PGR FILINGS
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`Defendant Western Digital Technologies (“WDT”) in Ocean Semiconductor LLC v.
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`Western Digital Technologies (Civil Action No.: 6:20-cv-1216-ADA) filed an inter partes
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`review petition in IPR2021-00864 on April 29, 2021, challenging the validity of U.S. Patent No.
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`6,660,651. The ’651 patent has also been asserted in this action. A final written decision in
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`IPR2021-00864 is expected in or around November 2023.
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`NUMBER OF ASSERTED PATENTS AND CLAIMS
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`In the Complaint, Plaintiff has identified seven patents and a total of seven claims as
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`allegedly infringed by Silicon Labs. Plaintiff will set forth all asserted patents and claims in its
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`preliminary infringement contentions.
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`APPOINTMENT OF TECHNICAL ADVISER
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`Plaintiff does not intend to request, nor anticipates a need for, a technical adviser at this
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`juncture. Silicon Labs does not object to the appointment of a technical adviser if the Court
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`would find one beneficial, including to assist with claim construction.
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`MEET AND CONFER STATUS
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`Plaintiff and Silicon Labs met and conferred.
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`Silicon Labs may seek an intra-district transfer to the Austin Division of the Western
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`District of Texas. Otherwise, the parties have no pre-Markman issues to raise at the case
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`management conference other than those already identified in the pending motions (Dkt. 14 and
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`Dkt. 18).
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`3
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`Case 6:20-cv-01214-ADA Document 20 Filed 05/04/21 Page 4 of 4
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`
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`Dated: May 4, 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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`Respectfully Submitted,
`
` /s/ Eric C. Green
`Marc B. Collier (SBN 00792418)
`marc.collier@nortonrosefulbright.com
`Eric C. Green (SBN 24069824)
`eric.green@nortonrosefulbright.com
`NORTON ROSE FULBRIGHT US LLP
`98 San Jacinto Boulevard, Suite 1100
`Austin, Texas 78701
`Tel: (512) 474-5201
`Fax: (512) 536-4598
`
`Richard S. Zembek (SBN 00797726)
`richard.zembek@nortonrosefulbright.com
`NORTON ROSE FULBRIGHT US LLP
`1301 McKinney, Suite 5100
`Houston, Texas 77010-3095
`Tel: (713) 651-5151
`Fax: (713) 651-5246
`COUNSEL FOR DEFENDANT SILICON
`LABORATORIES INC.
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`CERTIFICATE OF SERVICE
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`I hereby certify that on May 4, 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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`4
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