Case 6:20-cv-01215-ADA Document 18 Filed 03/12/21 Page 1 of 24
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`UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`
`
`NO. 6:20-cv-01215-ADA
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`OCEAN SEMICONDUCTOR LLC,
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`Plaintiff,
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`vs.
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`STMICROELECTRONICS, INC.,
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`Defendant.
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`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
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`DEFENDANT STMICROELECTRONICS, INC.’S
`PARTIAL MOTION TO DISMISS UNDER RULE 12(b)(6)
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`Case 6:20-cv-01215-ADA Document 18 Filed 03/12/21 Page 2 of 24
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`TABLE OF CONTENTS
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`Page
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`2.
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`INTRODUCTION ............................................................................................................. 1
`LEGAL STANDARD ........................................................................................................ 2
`ARGUMENT ..................................................................................................................... 3
`A.
`For Several Asserted Patents, Ocean Semiconductor Fails to State a Viable
`Infringement Claim Under 35 U.S.C. § 271(g) ..................................................... 4
`1.
`The ’538 and ’402 Patents Claim Processes for Detecting Faults,
`Not for Manufacturing Physical Products.................................................. 5
`The ’305 and ’248 Patents Claim Processes for Scheduling
`Activities, Not for Making Tangible Goods .............................................. 9
`Ocean Semiconductor’s Allegations of Induced Infringement Do Not Meet
`the Applicable Pleading Standard ........................................................................ 13
`Ocean Semiconductor Has Not Sufficiently Pled Willful Infringement ............. 15
`Ocean Semiconductor Does Not Adequately Plead Induced or Willful
`Infringement for the ’097 Patent .......................................................................... 18
`CONCLUSION ................................................................................................................ 19
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`B.
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`C.
`D.
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`-i-
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`I.
`II.
`III.
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`IV.
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`Case 6:20-cv-01215-ADA Document 18 Filed 03/12/21 Page 3 of 24
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`TABLE OF AUTHORITIES
`
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`Page(s)
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`
`CASES
`
`Affinity Labs of Tex., LLC v. Blackberry Ltd.,
`No. W:13-CV-362, 2014 WL 12551207 (W.D. Tex. Apr. 30, 2014)......................3, 13, 14, 15
`
`AIDS Healthcare Found., Inc. v. Gilead Scis., Inc.,
`890 F.3d 986 (Fed. Cir. 2018)..................................................................................................15
`
`Ashcroft v. Iqbal,
`556 U.S. 662 (2009) .........................................................................................................2, 3, 15
`
`Babbage Holdings, LLC v. Activision Blizzard, Inc.,
`No. 2:13-CV-750, 2014 WL 2115616 (E.D. Tex. May 15, 2014) ..........................................18
`
`Bayer AG v. Housey Pharms., Inc.,
`340 F.3d 1367 (Fed. Cir. 2003)................................................................................2, 6, 7, 9, 12
`
`Bell Atl. Corp. v. Twombly,
`550 U.S. 544 (2007) ...................................................................................................................3
`
`Bonutti Skeletal Innovations, LLC v. Globus Med. Inc.,
`No. 14-6650, 2015 WL 3755223 (E.D. Pa. June 15, 2015) .....................................................14
`
`Deere & Co. v. AGCO Corp.,
`No. 18-827-CFC, 2019 WL 668492 (D. Del. Feb. 19, 2019) ..................................................16
`
`Document Sec. Sys., Inc. v. Seoul Semiconductor Co.,
`No. 17-00981-JVS(JCGx), 2018 WL 6074582 (C.D. Cal. Feb. 5, 2018)................................17
`
`DSU Med. Corp. v. JMS Co.,
`471 F.3d 1293 (Fed. Cir. 2006)............................................................................................3, 13
`
`Inhale, Inc v. Gravitron, LLC,
`No. 1-18-CV-762-LY, 2018 WL 7324886 (W.D. Tex. Dec. 10, 2018) ......................14, 16, 17
`
`Lifetime Indus., Inc. v. Trim-Lok, Inc.,
`869 F.3d 1372 (Fed. Cir. 2017)..................................................................................................3
`
`M & C Innovations, LLC v. Igloo Prods. Corp.,
`No. 4:17-CV-2372, 2018 WL 4620713 (S.D. Tex. July 31, 2018) .........................................17
`
`Meetrix IP, LLC v. Cisco Sys., Inc.,
`No. 1-18-CV-309-LY, 2018 WL 8261315 (W.D. Tex. Nov. 30, 2018) ..................................16
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`Case 6:20-cv-01215-ADA Document 18 Filed 03/12/21 Page 4 of 24
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`TABLE OF AUTHORITIES
`(continued)
`
`
`Momenta Pharms., Inc. v. Teva Pharms. USA Inc.,
`809 F.3d 610 (Fed. Cir. 2015)......................................................................................2, 6, 9, 12
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`Page(s)
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`Parity Networks, LLC v. Cisco Sys., Inc.,
`Nos. 6:19-CV-00207-ADA, 6:19-CV-00209-ADA, 2019 WL 3940952 (W.D.
`Tex. July 26, 2019) ..............................................................................................................3, 15
`
`Parus Holdings Inc. v. Apple Inc.,
`No. 6:19-cv-00432-ADA (W.D. Tex. Jan. 31, 2020) ..............................................................18
`
`Vita-Mix Corp. v. Basic Holding, Inc.,
`581 F.3d 1317 (Fed. Cir. 2009)..................................................................................................3
`
`VLSI Tech. LLC v. Intel Corp.,
`No. 18-0966-CFC (D. Del. June 26, 2020) ..............................................................................18
`
`XpertUniverse, Inc. v. Cisco Sys., Inc.,
`No. 17-cv-03848-RS, 2017 WL 4551519 (N.D. Cal. Oct. 11, 2017) ......................................17
`
`STATUTES
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`35 U.S.C. § 271(g) ...........................................................................................................................2
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`Case 6:20-cv-01215-ADA Document 18 Filed 03/12/21 Page 5 of 24
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`I.
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`INTRODUCTION
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`Ocean Semiconductor LLC (“Ocean Semiconductor”) filed a lengthy Complaint against
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`STMicroelectronics, Inc. (“ST Inc.”) alleging infringement of eight patents relating to
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`semiconductor technology. Despite its hefty page-count, that Complaint suffers from multiple
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`infirmities that merit dismissal of several claims.
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`First, Ocean Semiconductor alleges that ST Inc. infringes patents under 35 U.S.C. § 271(g)
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`even though the claims of those patents cannot, as a matter of law, support that assertion. Section
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`271(g) allows a patent holder to assert infringement claims based on a product sold, offered for
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`sale, used in the U.S., or imported into the U.S., if that product was “made by” a process patented
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`in the U.S. As the courts have recognized, this statute has limits. The Federal Circuit has
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`repeatedly held that § 271(g) only applies when the claimed process creates a physical product. If
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`the claimed process does not do so, § 271(g) cannot provide the basis for an infringement claim.
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`In this case, Ocean Semiconductor alleges that semiconductor chips infringe under § 271(g) based
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`on methods claimed in the eight asserted patents. It is clear, however, that the asserted method
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`claims for at least four of the patents do not produce any physical product. Those claims recite
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`processes for detecting manufacturing faults, reacting to detected faults by halting manufacturing
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`or sharing fault-related data, and scheduling manufacturing activities. None of these processes
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`produces a tangible good and each is removed from the steps performed to make an actual product.
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`The mismatch between the claimed methods and the scope of § 271(g) precludes Ocean
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`Semiconductor’s infringement claims for the four asserted patents. For that reason, ST Inc.
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`requests that the Court dismiss those § 271(g) claims with prejudice.
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`Second, for all asserted patents, Ocean Semiconductor provides threadbare allegations of
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`induced infringement and willfulness. In each instance, Ocean Semiconductor fails to plead
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`plausible facts to support that ST Inc. possessed the knowledge and intent, or performed the
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`conduct, required for those claims. And indeed, Ocean Semiconductor cannot plead these facts as
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`to product manufacturing because ST Inc. conducts no semiconductor manufacturing activities
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`anywhere in the world. So Ocean Semiconductor instead relies on conclusory assertions and
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`hollow recitations of legal elements. Under the Supreme Court’s pleading standards, such
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`allegations do not suffice. What is more, one of the asserted patents expired in May 2020. For
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`that patent, Ocean Semiconductor does not plausibly plead that ST Inc. had the requisite
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`knowledge for induced or willful infringement prior to the patent’s expiration. Accordingly, ST
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`Inc. requests that the Court dismiss Ocean Semiconductor’s claims regarding induced infringement
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`and willfulness.
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`ST Inc. respectfully requests that the Court grant its motion to dismiss.
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`II.
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`LEGAL STANDARD
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`A patent holder can assert a claim for infringement when an accused infringer imports into
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`the U.S. or offers to sell, sells, or uses within the U.S. “a product which is made by a process
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`patented in the United States.” 35 U.S.C. § 271(g). Infringement claims under § 271(g) are
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`“limited to physical goods that were manufactured” using a patented process and do not extend to
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`“information generated by a patented process.” Bayer AG v. Housey Pharms., Inc., 340 F.3d 1367,
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`1368 (Fed. Cir. 2003). Section 271(g) applies to “the actual ‘ma[king]’ of a product” though not
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`“methods of testing a final product or intermediate substance.” Momenta Pharms., Inc. v. Teva
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`Pharms. USA Inc., 809 F.3d 610, 615 (Fed. Cir. 2015) (alteration in original). A product is “made
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`by” a process when that process “create[s] or give[s] new properties” to the product. Id. at 616–
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`17.
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`A complaint must “contain sufficient factual matter, accepted as true, to ‘state a claim to
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`relief that is plausible on its face.’” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atl.
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`Corp. v. Twombly, 550 U.S. 544, 570 (2007)). That requires “more than labels and conclusions,
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`and a formulaic recitation of the elements of a cause of action will not do.” Twombly, 550 U.S. at
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`555 (citations omitted). “Threadbare recitals of the elements of a cause of action, supported by
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`mere conclusory statements, do not suffice.” Iqbal, 556 U.S. at 678. The complaint must instead
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`contain “factual enhancement” sufficient to move the claim from “sheer possibility that a
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`defendant has acted unlawfully” to “facial plausibility.” Id.
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`To plead induced infringement under § 271(b), a patent holder “must plead facts plausibly
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`showing that the accused infringer ‘specifically intended [another party] to infringe [the patent]
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`and knew that the [other party]’s acts constituted infringement.’” Lifetime Indus., Inc. v. Trim-
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`Lok, Inc., 869 F.3d 1372, 1379 (Fed. Cir. 2017) (citation omitted); see also Affinity Labs of Tex.,
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`LLC v. Blackberry Ltd., No. W:13-CV-362, 2014 WL 12551207, at *3 (W.D. Tex. Apr. 30, 2014).
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`“[M]ere knowledge of possible infringement by others does not amount to inducement; specific
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`intent and action to induce infringement” are required. DSU Med. Corp. v. JMS Co., 471 F.3d
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`1293, 1305 (Fed. Cir. 2006) (quoting Warner-Lambert Co. v. Apotex Corp., 316 F. 3d 1348, 1364
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`(Fed. Cir. 2003)); Vita-Mix Corp. v. Basic Holding, Inc., 581 F.3d 1317, 1328 (Fed. Cir. 2009).
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`“To state a claim for willful infringement, ‘a [patent holder] must allege facts plausibly showing
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`that as of the time of the claim’s filing, the accused infringer: (1) knew of the patent-in-suit; (2)
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`after acquiring that knowledge, it infringed the patent; and (3) in doing so, it knew, or should have
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`known, that its conduct amounted to infringement of the patent.’” Parity Networks, LLC v. Cisco
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`Sys., Inc., Nos. 6:19-CV-00207-ADA, 6:19-CV-00209-ADA, 2019 WL 3940952, at *3 (W.D.
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`Tex. July 26, 2019) (quoting Välinge Innovation AB v. Halstead New England Corp., No. 16-1082-
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`LPS-CJB, 2018 WL 2411218, at *13 (D. Del. May 29, 2018)).
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`III. ARGUMENT
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`Ocean Semiconductor’s Complaint is defective in several respects. First, Ocean
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`Semiconductor alleges that ST Inc. infringes the asserted patents under 35 U.S.C. § 271(g).
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`Several of those patents claim processes that do not manufacture a tangible product, as required
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`by § 271(g). Ocean Semiconductor’s infringement claims for those patents are therefore legally
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`deficient and should be dismissed. Second, Ocean Semiconductor accuses ST Inc. of infringing
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`all eight asserted patents under an induced infringement theory. As support, Ocean Semiconductor
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`offers only conclusory and speculative assertions relating to the required knowledge and specific
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`intent, which is no surprise given that, for example, ST Inc. does not conduct or oversee product
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`manufacturing. Ocean Semiconductor’s approach is insufficient to meet the requisite pleading
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`standard, and the inducement claims should be dismissed. Third, although Ocean Semiconductor
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`asserts willful infringement claims, because ST Inc. has no role in product manufacturing, Ocean
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`Semiconductor must rely on legal conclusions unsupported by factual content and thus cannot
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`identify the type of egregious conduct needed to support enhanced damages. For both reasons,
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`Ocean Semiconductor’s willful infringement claims should be dismissed.
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`A.
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`For Several Asserted Patents, Ocean Semiconductor Fails to State a Viable
`Infringement Claim Under 35 U.S.C. § 271(g)
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`In its complaint, Ocean Semiconductor alleges that ST Inc. infringes each of eight asserted
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`patents based on 35 U.S.C. § 271(g). Dkt. 1 ¶¶ 85, 106, 126, 146, 166, 187, 208, 228. By its own
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`terms, § 271(g) applies only where a product is “made by” a process patented in the U.S. For at
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`least four of the asserted patents—U.S. Patent Nos. 8,676,538 (the “’538 patent”), 6,725,402 (the
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`“’402 patent”), 6,907,305 (the “’305 patent”), and 6,968,248 (the “’248 patent”)—the claimed
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`processes do not manufacture a product. Rather, those processes generate information regarding
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`manufacturing faults and process scheduling. No physical product is “made by” such methods.
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`Ocean Semiconductor ignores that distinction, but as a matter of law, ST Inc. cannot infringe the
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`claimed processes under 35 U.S.C. § 271(g). ST Inc. therefore requests that the Court dismiss
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`Ocean Semiconductor’s infringement claims based on § 271(g) relating to Counts II (’402 patent),
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`III (’305 patent), IV (’248 patent), and VIII (’538 patent) with prejudice.
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`1.
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`The ’538 and ’402 Patents Claim Processes for Detecting Faults, Not
`for Manufacturing Physical Products
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`The ’538 and ’402 patents do not claim processes for manufacturing products, as required
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`for infringement under § 271(g), and therefore cannot be infringed under that statue.
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`Turning first to the ’538 patent, Ocean Semiconductor asserts that ST Inc. infringes
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`claim 1. Dkt. 1 ¶ 228. Claim 1 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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`Id. Ex. H, 13:27-39.
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`The claim recites a process for detecting faults (i.e., “abnormal conditions”) that arise
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`during a manufacturing process and then tuning that fault detection process to improve it. See id.
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`at 2:43-45. Specifically, the claimed method generates information about the “relationship”
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`between a parameter and a detected fault, uses that data to adjust parameter “weighting” in the
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`fault detection algorithm, and applies the adjusted weighting when performing subsequent fault
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`detection analysis. Ocean Semiconductor itself describes the alleged invention in precisely this
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`way. Dkt. 1 ¶¶ 77 (“[T]he [’538] patent describes a method for employing a dynamic weighting
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`technique in fault detection analysis, including determining a relationship of a parameter relating
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`to the fault detection analysis to a detected fault and adjusting a weighting associating with the
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`parameter based upon the relationship of the parameter to the detected fault.”), ¶ 229 (“A
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`relationship of a parameter relating to said fault detection analysis to a detected fault is determined
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`in the computer. A weighting of said parameter based upon said relationship of said parameter to
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`said detected fault is adjusted in said computer. The fault detection analysis relating to processing
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`of a subsequent workpiece using said adjusted weighting is performed in said computer.”).
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`Although Ocean Semiconductor alleges infringement of claim 1 under § 271(g), id. ¶ 228,
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`the claimed steps do not manufacture a physical product. That is fatal to Ocean Semiconductor’s
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`claim. The claimed process in the ’538 patent creates information about parameter-fault
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`relationships and adjustments to parameter weighting that is used in later fault detection analysis
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`to generate even more fault data. The law is clear, however, that § 271(g) applies only to methods
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`for the actual manufacture of tangible goods and not to processes that merely generate intangible
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`information. Bayer, 340 F.3d at 1368 (“infringement under 35 U.S.C. § 271(g) is limited to
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`physical goods that were manufactured and does not include information generated by a patented
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`process”); id. at 1377 (“We, therefore, hold that in order for a product to have been ‘made by a
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`process patented in the United States’ it must have been a physical article that was ‘manufactured’
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`and that the production of information is not covered.”); see also Momenta, 809 F.3d at 615
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`(§ 271(g) is limited to the “actual mak[ing] of a product”) (alteration in original); id. at 616 (“[T]he
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`ordinary meaning of ‘made’ as used in § 271(g) means ‘manufacture,’ and extends to the creation
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`or transformation of a product, such as by synthesizing, combining components, or giving raw
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`materials new properties.”). Because the method of claim 1 of the ’538 patent generates
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`information rather than a tangible product, Ocean Semiconductor cannot, by law, claim that ST
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`Inc. has infringed the patent based on § 271(g).
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`The process claimed in the ’538 patent resembles the method in Bayer that the Federal
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`Circuit found did not support an infringement claim under § 271(g). In that case, the patented
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`method was directed to identifying drugs that affect protein activity. Bayer, 340 F.3d at 1369. The
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`court rejected the idea that drugs identified using the claimed process were “products” “made by”
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`that process, as required by § 271(g), because “identification and generation of data are not steps
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`in the manufacture of a final drug product.” Id. at 1377 (citation omitted). The court affirmed
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`dismissal of the patent holder’s claims based on § 271(g). Id. at 1378. ST Inc. seeks dismissal
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`here for the same reasons. As in Bayer, the fault detection process claimed in the ’538 patent
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`generates data instead of specifying steps in the manufacture of a tangible product.
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`For these reasons, Ocean Semiconductor’s Count VIII fails to state a claim based on
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`§ 271(g) for which relief can be granted. That claim should be dismissed.
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`Like the ’538 patent, the ’402 patent (i) relates to fault detection and (ii) does not claim a
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`process for making a product. Ocean Semiconductor alleges that ST Inc. infringes claim 1 of the
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`’402 patent under § 271(g), Dkt. 1 ¶ 106, which is reproduced below.
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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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`Id. Ex. C, 7:10-38.
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`The claimed method collects and distributes processing tool “state data,” determines
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`whether a fault exists based on that data, and performs a “predetermined action” when there is a
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`fault. The ’402 patent describes shutting down the processing tool as one “predetermined action.”
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`Id., Abstract (“In accordance with one embodiment, the predetermined action is to shutdown the
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`processing tool so as to prevent further production of faulty wafers.”), 4:28-30 (similar), 5:66-6:4
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`(similar), 6:55-58 (similar). Ocean Semiconductor adopts this view of the alleged invention: “the
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`’402 patent describes systems and methods for shutting down a process tool or halting a
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`manufacturing process in the presence of a manufacturing fault.” Dkt. 1 ¶ 47 (emphasis added).
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`In addition to shutting down the tool, the system may send data “to inform a technician on how to
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`rectify a faulty condition of the tool.” Id. Ex. C, 4:30-33; see also id., 6:4-9. The specification
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`also describes an alternative “predetermined action” in which tool data is forwarded to other parts
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`of the manufacturing system so the data can, if desired, be plotted on a chart for review by a factory
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`technician. Id., 6:10-13 (“Alternatively, the predetermined action performed by the plan executor
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`330 may be to forward a copy of the tool health data to the equipment interface 110, and then to
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`forward the health data to the workstream 125.”), 6:61-64 (“The equipment interface 110 would
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`then forward the tool health data to the workstream 125, where the tool health data may be
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`averaged and plotted on a chart for viewing by a fab technician, if so desired.”). The ’402 patent
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`describes no other “predetermined actions,” and Ocean Semiconductor has not identified any.
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`Indeed, as described above, in its Complaint Ocean Semiconductor expressly limits the claimed
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`“predetermined action” to “shutting down a process tool or halting a manufacturing process.”
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`Dkt. 1 ¶ 47.
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`As with the ’538 patent, § 271(g) does not apply to the claimed method of the ’402 patent.
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`The claimed process collects tool data relating to potential faults and reacts to a detected fault
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`(1) by shutting down manufacturing (as taught in the patent and alleged by Ocean Semiconductor)
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`and/or (2) by sharing fault-related information (as disclosed in the specification). After evaluating
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`tool data and detecting a fault, the process halts production and/or transmits data. These steps do
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`not create a physical product, which is exactly what § 271(g) requires to support an infringement
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`claim. Bayer, 340 F.3d at 1368, 1377; Momenta, 809 F.3d at 615–16. Ocean Semiconductor
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`cannot, as a matter of law, claim that ST Inc. infringes the ’402 patent under § 271(g) because the
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`claimed method does not make a tangible good.
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`As a result, Ocean Semiconductor’s § 271(g) claim in Count II cannot stand and should be
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`dismissed.
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`2.
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`The ’305 and ’248 Patents Claim Processes for Scheduling Activities,
`Not for Making Tangible Goods
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`As with the fault detection patents described above, the ’305 and ’248 patents do not claim
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`methods for manufacturing a physical article. Thus, like the fault detection patents, Ocean
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`Semiconductor cannot state a claim for infringement under § 271(g) for these patents.
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`The ’305 and ’248 patents are related and claim nearly identical subject matter. Ocean
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`Semiconductor alleges that ST Inc. infringes claim 1 of the ’305 patent under § 271(g). Dkt. 1
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`¶ 124. That claim appears below.
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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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`Id. Ex. B, 39:52-60.
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`The ’248 patent issued from a continuation of the application that became the ’305 patent.
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`Id. Ex. D, Related U.S. Application Data. Ocean Semiconductor alleges that ST Inc. infringes
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`claim 1 under § 271(g), Dkt. 1 ¶ 144. Claim 1 is reproduced below.
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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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`Id. Ex. D, 30:40-48.
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`The claims differ in two minor ways: claim 1 of the ’248 patent adds the term
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`“automatically” to the second and third limitations and the phrase “integrated, automated” to the
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`second limitation. All other claim language is the same. Both claims explicitly recite a “method
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`for scheduling” in a manufacturing setting. The specifications say the same thing about the alleged
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`invention. Dkt. 1 Ex. B, 1:15-19 (the field of the invention is “scheduling in an automated
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`Case 6:20-cv-01215-ADA Document 18 Filed 03/12/21 Page 15 of 24
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`manufacturing environment”); id. Ex. D, 1:18-21 (same). The claimed processes are
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`straightforward: upon detection of a “predetermined event,” a “software scheduling agent”
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`schedules an action in response. Put even more simply, the claimed methods set a time for when
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`an action will happen. Ocean Semiconductor recognizes this fact, noting that the ’305 and ’248
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`patents describe “agents that reactively schedule, initiate, and execute activities, such as lot
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`transport and processing, in response to certain events occurring during the semiconductor
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`manufacturing process.” Dkt. 1 ¶¶ 41, 53.
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`The patents provide examples of activities that might be scheduled using the claimed
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`processes. Those activities include preventative maintenance for processing tools, equipment
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`qualification, and tool diagnostic and reconditioning procedures. Id. Ex. B, 2:18-22, 7:2-7; id. Ex.
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`D, 2:20-24, 7:4-9. Other examples are the transporting and processing of lots, which are groups
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`of semiconductor wafers. Id. Ex. B, 2:16-17, 5:6-8, 6:65-7:11; id. Ex. D, 2:18-19, 5:8-10, 6:67-
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`7:13. Annotated Figure 5 of the patents, below, shows scheduled actions that might result from
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`the claimed processes. The figure illustrates the activity calendar for a wafer lot (“LOT1”) within
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`the red rectangle. The lot has been scheduled to move at certain times (“MOVE1,” “MOVE2,”
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`“MOVE3,” “MOVE4,” and “MOVE5”) and to undergo processing in “TOOL1” and “TOOL2” at
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`other times. Id. Ex B, 11:22-26; id. Ex D, 11:24-28.
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`The law bars Ocean Semiconductor from asserting claims that ST Inc. infringes the recited
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`methods based on § 271(g). Those processes require three steps: (i) detecting an event,
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`(ii) notifying a scheduling agent, and (iii) scheduling a responsive action. Akin to the claims of
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`the fault detection patents, this scheduling process does not manufacture a physical product. But
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`that is a necessary precondition for § 271(g) to apply—the “process patented in the United States”
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`described in the statute must produce a tangible good. Bayer, 340 F.3d at 1368, 1377; Momenta,
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`809 F.3d at 615–16. The processes claimed in the ’305 and ’248 patents do not satisfy this
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`requirement; they recite methods for scheduling activities, not for making a physical product. As
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`in Bayer and Momenta, the claimed methods are only tangentially related to the making of a
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`physical product and thus cannot support a claim for infringement under § 271(g).
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`Like the ’538 patent, the claimed processes in the ’305 and ’248 patents resemble the one
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`the Federal Circuit addressed in Bayer. There, the court concluded that the “identification and
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`generation of data” relating to potential drugs affecting protein behavior did not constitute “steps
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`in the manufacture of a final drug product.” 340 F.3d at 1377 (citation omitted). The court further
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`explained unequivocally that § 271(g) does not apply to “information generated by a patented
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`process.” Id. at 1368; see also id. at 1377 (“the production of information is not covered” by
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`§ 271(g)). Because the claimed process at issue in Bayer produced information instead of a
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`physical product, the court dismissed the patent holder’s claims based on § 271(g). Id. at 1378.
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`Here, the claimed methods are similar. At most, they create information—namely, a scheduled
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`action that corresponds to an activity and a time. Based on Federal Circuit precedent, that
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`information does not trigger § 271(g).
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`For these reasons, Ocean Semiconductor’s claims based on § 271(g) in Counts II and III
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`should be dismissed.
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`B.
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`Ocean Semiconductor’s Allegations of Induced Infringement Do Not Meet the
`Applicable Pleading Standard
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`For each asserted patent, Ocean Semiconductor alleges that ST Inc. induced infringement
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`under 35 U.S.C. § 271(b).1 Dkt. 1 ¶¶ 90, 110, 130, 150, 171, 192, 212, 232. In every instance,
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`after reciting some of the elements of induced infringement and baldly asserting they are met,
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`Ocean Semiconductor repeats the same assertions without providing sufficient factual allegations
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`to support its claims. That approach to pleading induced infringement does not meet the minimum
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`pleading requirements imposed by Twombly and Iqbal. It follows that Ocean Semiconductor’s
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`induced infringement claims should be dismissed.
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`Ocean Semiconductor has not pled plausible facts to support that ST Inc. knowingly
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`induced infringement and acted with specific intent to do so, as required for that claim. DSU Med.,
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`471 F.3d at 1306. As support for its induced infringement claims, Ocean Semiconductor states
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`that ST Inc. “actively promotes the sale, use, and importation” of accused products in documents,
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`on webpages, and in trade shows; sells products to third parties; and provides technical and sales
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`support. Dkt. 1 ¶¶ 91-93, 111-13, 131-33, 151-53, 172-74, 193-95, 213-15, 233-35. In making
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`those general assertions, Ocean Semiconductor does not identify a single statement or action that
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`establishes ST Inc. knowingly and with specific intent induced infringement. Affinity Labs, 2014
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`WL 12551207, at *6 (“Plaintiff does not specify how the marketing and selling activities of [the
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`alleged infringer] actually induced third-parties to infringe”). Indeed, Ocean Semiconductor does
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`not even allege that these purported activities demonstrate the knowledge or specific intent
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`1
`Although the Complaint requests a judgment that ST Inc. has “contribute