Case 6:20-cv-01215-ADA Document 19 Filed 03/26/21 Page 1 of 26
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`
`Ocean Semiconductor LLC,
`
`Plaintiff,
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`C.A. No. 6:20-cv-1215-ADA
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`
`
`v.
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`STMicroelectronics, Inc.,
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`Defendants.
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`JURY TRIAL DEMANDED
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` PATENT CASE
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`
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`PLAINTIFF’S OPPOSITION TO STMICROELECTRONICS, INC.’S PARTIAL
`MOTION TO DISMISS UNDER RULE 12(b)(6)
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`
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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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`Case 6:20-cv-01215-ADA Document 19 Filed 03/26/21 Page 2 of 26
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`TABLE OF CONTENTS
`INTRODUCTION ................................................................................................................. 1
`
`I.
`
`II. LEGAL STANDARD ........................................................................................................... 2
`
`A.
`
`B.
`
`The High Bar for a Motion to Dismiss ........................................................................ 2
`
`The Broad Reach of Infringement Under 35 U.S.C. § 271(g) ................................... 3
`
`III. ARGUMENT ......................................................................................................................... 4
`
`A.
`
`The ’538, ’402, ’305, and ’248 Patents Are Directed to the Manufacture of a
`Product and Subject to Section 271(g) ........................................................................ 4
`
`1.
`
`2.
`
`The ’538 Patent Involves the Making of Physical Products Such as Silicon
`Wafers, and Ocean’s Pleadings Reflect that Fact .................................................. 4
`
`The ’402 Patent Involves the Making of Physical Products Such as Silicon
`Wafers, and Ocean’s Pleadings Reflect that Fact .................................................. 7
`
`B.
`
`Ocean’s Complaint Sufficiently Asserts Claims for Induced Infringement .......... 12
`
`1.
`
`Ocean’s Complaint Sufficiently Asserts Claims for Induced Infringement as
`STMicro Gained Knowledge of the Processes and Tools Used to Manufacture
`Its Products Through Its Contractual Relationships with the Foundries ......... 12
`
`2.
`
`The Complaint Alleges Sufficient Facts to Plead Induced Infringement .......... 14
`
`C.
`
`The Complaint Sufficiently Asserts Claims for Willful Infringement ................... 16
`
`1.
`
`2.
`
`D.
`
`E.
`
`F.
`
`Ocean’s Complaint Sufficiently Pleads Willful Infringement Because STMicro
`Had Notice of the Asserted Patents ....................................................................... 16
`
`This Court Has Previously Ruled that Egregious Conduct Is Not Required to be
`Pled at Pleading Stage ............................................................................................ 17
`
`Ocean Will Amend Its Pleadings With Respect to the ’097 Patent ........................ 18
`
`In All Events, Fact Issues Preclude Dismissal .......................................................... 18
`
`At Worst, Rather Than Dismissing the Complaint, Leave to Amend Should Be
`Granted ........................................................................................................................ 19
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`IV. CONCLUSION ................................................................................................................... 19
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`i
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`Case 6:20-cv-01215-ADA Document 19 Filed 03/26/21 Page 3 of 26
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`
`Affinity Labs of Texas, LLC v. Blackberry Ltd.,
`C.A. No. W:13-cv-362 .............................................................................................................. 15
`
`Ashcroft v. Iqbal
`556 U.S. 662 (2009) .................................................................................................................... 2
`
`Bayer AG v. Housey Pharm., Inc.
`340 F.3d 1367 (Fed. Cir. 2003) .................................................................................... 3, 4, 8, 10
`
`Bell Atl. Corp. v. Twombly
`550 U.S. 544 (2007) .............................................................................................................. 2, 16
`
`Bio-Rad Labs Inc. v. Thermo Fisher Scientific Inc.,
`267 F. Supp. 3d 499 (D. Del. 2017) .......................................................................................... 18
`
`Biotec Biologische Naturverpackungen GmbH & Co. v. Biocorp, Inc.,
`249 F.3d 1341 (Fed. Cir. 2001) ................................................................................................ 19
`
`Bio-Technology General Corp. v. Genentech, Inc.,
`80 F.3d 1553 (Fed. Cir. 1996) .......................................................................................... 3, 9, 18
`
`Bonutti Skeletal Innovations, LLC v. Globus Med. Inc.,
`No. 14-6650,
`2015 US. Dist. LEXIS 77492 (E.D. Pa. June 15, 2015) ........................................................... 15
`
`Causey v. Sewell Cadillac-Chevrolet, Inc.
`394 F.3d 285 (5th Cir. 2004) ...................................................................................................... 3
`
`DermaFocus LLC v. Ulthera, Inc.,
`201 F. Supp. 3d 465 (D. Del. 2016) .......................................................................................... 18
`
`Disc Disease Sols. Inc. v. VGH Sols., Inc.
`888 F.3 1256 (Fed. Cir. 2018) .................................................................................................... 3
`
`Eli Lilly & Co. v. Am. Cyanamid Co.
`82 F.3d 1568 (Fed. Cir. 1996 ............................................................................................ 3, 4, 18
`
`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) ...................................................... 3
`
`Frye v. Anadarko Petro. Corp.,
`953 F.3d 285 (5th Cir. 2019) ....................................................................................................... 2
`
`ii
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`

`

`Case 6:20-cv-01215-ADA Document 19 Filed 03/26/21 Page 4 of 26
`
`Griggs v. Hinds Junior Coll.,
`563 F.2d 179 (5th Cir. 1977) .................................................................................................... 19
`
`Inhale, Inc. v. Gravitron, LLC,
`CAUSE NO. 1-18-CV-762-LY,
`2018 U.S. Dist. LEXIS 223241 (W.D. Tex. Dec. 10, 2018) .................................................... 15
`
`James v. J2 Cloud Servs., LLC,
`887 F.3d 1368 (Fed. Cir. 2018) ................................................................................................ 14
`
`Janssen Pharmaceutica, N.V. v. Mylan Pharms. Inc.,
`No. 15-760-SLR-SRF,
`2016 U.S. Dist. LEXIS 192881 (D. Del. Oct. 18, 2016) .......................................................... 16
`
`Kyowa Hakka Bio, Co. Ltd. v. Ajinomoto Co.,
`No. 17-313, 2018-MSG,
`U.S. Dist. LEXIS 22392 (D. Del. Feb. 12, 2018) ..................................................................... 16
`
`Lone Star Motor Imp., Inc. v. Citroen Cars Corp.,
`288 F.2d 69 (5th Cir. 1961) ...................................................................................................... 19
`
`Lormand v. US Unwired, Inc.,
`565 F.3d 228 (5th Cir. 2009) ....................................................................................................... 2
`
`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) .................................................................... 19
`
`Momenta Pharms., Inc. v. Teva Pharms. USA Inc.,
`809 F.3d 610 (Fed. Cir. 2015) .................................................................................................... 6
`
`Motiva Patents, LLC v. Sony Corp.,
`408 F. Supp. 3d 819 (E.D. Tex. 2019) ...................................................................................... 14
`
`Ormco Corp. v. Align Tech., Inc.,
`653 F. Supp. 2d 1016 (C.D. Cal. 2009) .................................................................................... 18
`
`Parity Networks, LLC v. Cisco Sys.,
`No. 6:19-cv-00207-ADA,
`2019 U.S. Dist. LEXIS 144094 (W.D. Tex. Jul. 26, 2019) ...................................................... 17
`
`Plano Encryption Techs. v. Alkami Tech.,
`No. 2:16-cv-1032-JRG,
`2017 U.S. Dist. LEXIS 221765 (E.D. Tex. Sept. 22, 2017) ..................................................... 17
`
`Skinner v. Switzer
`562 U.S. 521 (2011) .................................................................................................................... 2
`
`
`
`iii
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`Case 6:20-cv-01215-ADA Document 19 Filed 03/26/21 Page 5 of 26
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`Statutes
`
`35 U.S.C. § 271 ............................................................................................................................... 1
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`Other Authorities
`
`5 Chisum on Patents § 16.02........................................................................................................... 4
`
`Rules
`
`Fed. R. Civ. P. 15 .......................................................................................................................... 19
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`iv
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`Case 6:20-cv-01215-ADA Document 19 Filed 03/26/21 Page 6 of 26
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`I.
`
`INTRODUCTION
`
`STMicroelectronics, Inc.’s (“STMicro”) Partial Motion to Dismiss Under Rule 12(b)(6)
`
`(Dkt. 18) is a hodgepodge of conclusory assertions about the adequacy of Ocean Semiconductor
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`LLC’s (“Ocean”) Complaint (Dkt. 1) that both confuses the pleading standards and Rule 12(b)(6)
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`law while citing to non-precedential and inapplicable case law and ignoring the extensive
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`evidentiary presentation (including citation to STMicro’s website, presentations at trade shows,
`
`and STMicro’s online discussion forum) in that Complaint. While purporting to apply a
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`“plausibility” standard, STMicro actually argues for a much higher, and legally improper,
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`pleading standard that would require Ocean to know, and lay out in the Complaint, substantially
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`more than is required under the Iqbal/Twombly Supreme Court standard. This misapplication of
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`legal standards runs throughout STMicro’s Motion.
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`First, STMicro wrongly argues that four of the asserted patents cannot be asserted under
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`35 U.S.C. § 271(g) because they allegedly are not drawn to the manufacture of a product.
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`STMicro mischaracterizes what the patents cover, however, and ignores that each patent teaches
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`and claims manufacturing activities and physical products that place them well within the ambit
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`of § 271(g).
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`Similarly, in support of its inducement claims, Ocean has provided evidence and factual
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`allegations—allegations that the Court must take as true—that would allow an inference that
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`STMicro knew about the manufacturing processes and equipment used to manufacture its own
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`products by virtue of its contractual relationships with its foundries. Already exceeding what is
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`typically required under the Iqbal/Twombly pleading standard, Ocean’s Complaint also offered
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`three specific classes of information that Ocean expects discovery will reveal and that would
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`lend credence to Ocean’s inducement allegations. If this information is not sufficient to meet the
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`Iqbal/Twombly pleading standard, it is difficult to imagine anything that would.
`
`1
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`

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`Case 6:20-cv-01215-ADA Document 19 Filed 03/26/21 Page 7 of 26
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`Finally, on willfulness, STMicro argues for an “egregiousness” requirement that is not
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`the law while ignoring this Court’s case precedent establishing that notice letters are sufficient to
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`show knowledge and to plausibly show that STMicro should have known that its conduct
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`amounted to infringement.
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`Because this Court must accept all well-pleaded facts as true and draw all reasonable
`
`inferences in Ocean’s favor and should not be resolving at this stage whether Ocean will
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`ultimately prevail, and because STMicro fails to properly consider the pleaded facts or to
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`properly apply the various legal standards, STMicro’s Motion should be denied.1
`
`II.
`
`LEGAL STANDARD
`
`A.
`
`The High Bar for a Motion to Dismiss
`
`Under Federal Rule of Civil Procedure 12(b)(6), dismissal of a complaint or cause of
`
`action is appropriate if it fails to state a claim for relief that is “plausible on its face.” Ashcroft v.
`
`Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)).
`
`When considering a motion to dismiss under Rule 12(b)(6), “[t]he court must accept all well-
`
`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,
`
`Inc., 565 F.3d 228, 232 (5th Cir. 2009) );2 see also Bustos v. Martini Club, Inc., 599 F.3d 458,
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`461 (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
`
`threshold”—not whether the plaintiff will ultimately prevail. Skinner v. Switzer, 562 U.S. 521,
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`530 (2011). Pleadings should be construed broadly in light of the allegations as a whole, and the
`
`
`1 As stated below, Ocean agrees to amend its inducement and willfulness pleadings with respect
`to the ’097 patent following the Court’s ruling on STMicro’s Motion.
`2 Unless otherwise indicated, all emphasis in this brief has been added.
`2
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`

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`Case 6:20-cv-01215-ADA Document 19 Filed 03/26/21 Page 8 of 26
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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.
`
`of Am., C.A. No. 18-1335-XR, 2019 U.S. Dist. LEXIS 105833, at *10 (W.D. Tex. June 25, 2019)
`
`(citing Disc Disease Sols. Inc. v. VGH Sols., Inc., 888 F.3 1256 (Fed. Cir. 2018)).
`
`B.
`
`The Broad Reach of Infringement Under 35 U.S.C. § 271(g)
`
`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
`
`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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`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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`3
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`Case 6:20-cv-01215-ADA Document 19 Filed 03/26/21 Page 9 of 26
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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. v. Genentech, Inc., 80 F.3d 1553, 1561, 38
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`USPQ2d 1321, 1327 (Fed. Cir. 1996), cert. denied, 519 U.S. 911 (1996)). “The connection
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`between a patented process and a product can vary from immediate . . . to remote[.]” 5 Chisum
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`on Patents § 16.02[6][d][iv] (2019). Consequently, whether a product is “made by” a patent
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`should be interpreted expansively to include products made through the “agency,” “efficacy,”
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`“work,” “participation,” “means or instrumentality,” “medium,” or “operation” of a process.
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`Bayer at 1378, n.12 (citing Webster’s and Random House dictionaries).
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`III. ARGUMENT
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`A.
`The ’538, ’402, ’305, and ’248 Patents Are Directed to the Manufacture of a
`Product and Subject to Section 271(g)
`
`1. The ’538 Patent Involves the Making of Physical Products Such as
`Silicon Wafers, and Ocean’s Pleadings Reflect that Fact
`
`Claim 1 of the ’538 patent recites “[a] method, comprising: performing in a computer a
`
`fault detection analysis relating to processing of a workpiece.” (Dkt. 1-8 (’538 patent) at 13:28-
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`30.) This “workpiece comprises a semiconductor wafer.” (Claim 2.) The fault detection
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`analysis includes determining “a relationship of a parameter relating to said fault detection
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`analysis to a detected fault,” including a relationship between at least one of “pressure,”
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`“temperature,” “data,” “humidity,” or “gas flow.” (See claim 9.) The performance of the
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`patented fault detection method is not undertaken for mere testing or data collection purposes,
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`4
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`Case 6:20-cv-01215-ADA Document 19 Filed 03/26/21 Page 10 of 26
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`but rather “relat[es] to processing of a subsequent workpiece . . . .” (Id. at 13:38.) Thus, on its
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`face, the claimed method is used in the direct 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 method involves 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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`a. The Products of the ’538 Patent Are Not Data
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`Relying on Bayer, STMicro contends that “the fault detection process claimed in the ’538
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`patent generates data instead of specifying steps in the manufacture of a tangible product.” (Dkt.
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`18 at 7.) In doing so, STMicro misconstrues Bayer, arguing that § 271(g) liability only attaches
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`where the patented method directly claims the physical manufacture of that product. Bayer holds
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`no such thing. The language from Bayer to which STMicro cites relates to the question of
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`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 AG, 340 F.3d at
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`1370-71. 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 imported
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`is not information, but the physical products that a manufactured using these patented processes.
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`Notably, Bayer itself articulates this distinction, demonstrating why the patents in suit
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`here 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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`5
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`Case 6:20-cv-01215-ADA Document 19 Filed 03/26/21 Page 11 of 26
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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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`STMicro’s reliance on Momenta Pharms., Inc. v. Teva Pharms. USA Inc., 809 F.3d 610
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`(Fed. Cir. 2015) is also misplaced. Nothing in the definition of “made” provided in Momenta
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`would exclude products that are the result of the ’538 processes, particularly where those
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`products are intended for importation and/or sale, rather than the “intermediate” products at issue
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`in that case. Id., 809 F.3d at 615-16.
`
`b. Every Claim Limitation of the Patented Method Is Implemented
`During the Manufacture of STMicro’s Accused Products—the
`Exact Conduct Prohibited by Section 271(g)
`
`STMicro’s argument that “the claimed steps do not manufacture a physical product”
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`(Dkt. 18 at 6) fails because it ignores that claim 1 explicitly recites “processing of a
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`workpiece”—claim language that STMicro intentionally ignores in its motion—which
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`immediately confirms that the “fault detection analysis” is being performed on physical products
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`during manufacturing. Claim 2 also confirms that the “workpiece comprises a semiconductor
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`wafer,” leaving no room to speculate that this is anything but a process for manufacturing a
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`semiconductor product. Also, claim 1 recites “performing . . . a fault detection analysis relating
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`to processing of a workpiece.” The fault detection analysis is used “to determine that a fault
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`associated with said processing of said workpiece has occurred.” (Claim 15.) The resulting
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`adjustment is then used for “processing of a subsequent workpiece” as recited in claim 1.
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`According to the specification, the fault detection analysis is performed “when processing
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`semiconductor wafers” such that the analysis “is then used to modify subsequent processes.”
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`(Dkt. 1-8 (’538 patent) at 2:10-14.) As a result, “a more effective and accurate process
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`adjustment may be performed to achieve more accurate semiconductor wafer 105 characteristics
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`and improved yields.” (Id. at 12:47-51.) Thus, the intrinsic record is unequivocally clear that the
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`6
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`Case 6:20-cv-01215-ADA Document 19 Filed 03/26/21 Page 12 of 26
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`claimed method results in the manufacture a physical product, which has defect-free
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`“characteristics.”
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`2. The ’402 Patent Involves the Making of Physical Products Such as
`Silicon Wafers, and Ocean’s Pleadings Reflect that Fact
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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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`that STMicro’s argument has no merit.
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`Moreover, the ’402 patent covers similar subject matter to the ’538 patent—fault
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`detection. As such, the discussion just above as to the ’538 patent applies equally to the ’402
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`patent. Like the ‘538 patent, the ’402 patent itself confirms that the invention relates to (1) the
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`making of physical products such as silicon wafers, and (2) the actual manufacture of such
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`products. For example, the exemplary system and its manufacturing tools as described in the
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`’402 patent are “semiconductor fabrication equipment used to produce a processing piece, such
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`as a silicon wafer,” and the exemplary tool is a “Rapid Thermal Processing (RTP) tool” or “a
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`tool for processing silicon wafers.” (Dkt. 1-3 (’402 patent) at 2:42-48.) The independent method
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`claim recites “the manufacture of a processing piece”; and the independent system claim recites a
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`tool adapted to “manufacture a processing piece” (claim 8). One dependent claim recites that
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`“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 STMicro. The Complaint limits its
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`accusations under § 271(g) to products made using the claimed method. (Dkt. 1 at ¶ 95.) The
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`Complaint expressly alleges that “STMicro has directly infringed and continues to infringe at
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`least claim 1 of the ’402 patent . . . by importing into the United States, and/or using, and/or
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`selling, and/or offering for sale in the United States, without authority or license, the ’402
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`Accused Products, in violation of 35 U.S.C. § 271(g).” (Id. at ¶ 106.)
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`7
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`Case 6:20-cv-01215-ADA Document 19 Filed 03/26/21 Page 13 of 26
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`a. STMicro’s Arguments Fail Because Each of the “Tools” is Used
`for Manufacturing the Physical Products
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`STMicro ignores that the processing tool is “related to the manufacture of a processing
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`piece”—claim language that STMicro intentionally ignores in its motion. The claim charts
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`accompanying the Complaint also specify that these steps are performed at the “manufacturing
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`equipment” during production. (See Dkt. 1-22 at 3 (“Using the E3 FDC module, engineers can
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`analyze sensor data from manufacturing equipment, detect out-of-norm conditions and relate
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`them to problems with tools”; see also id. at 9 (“The process level R2R control modules may
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`then adjust parameters of individual recipes, manufacturing machines, etc. in response to the new
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`targets and settings. For example, the deposition R2R control module 535 may adjust parameters
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`of one or more deposition manufacturing machines”); Dkt. 1-23 at 3 (“Exensio . . . controls
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`semiconductor manufacturing equipment and processes . . . [and] allows manufacturers to
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`accurately detect and identify process or tool problems that arise during production, in real
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`time.”) Because the alleged steps recited in claim 1 are performed by and at the manufacturing
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`equipment used to manufacture the physical products, they are necessarily directed to the
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`manufacture of such products.
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`b. Every Claim Limitation of the Patented Method Is Implemented
`During the Manufacture of STMicro’s Accused Products—the
`Exact Conduct Prohibited by Section 271(g)
`
`The target of Section 271(g) is the importation of a product made using a patented
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`process or its subsequent sale within the United States. Bayer, 340 F.3d at 1375. While the
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`statute requires a physical product, the offending physical product is that which was
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`manufactured using the patented process. (Id. at 1377.) In the Complaint, Ocean alleges that
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`STMicro used the patented processes, including all of the limitations embodied in each asserted
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`claim, as part of the manufacture of STMicro’s accused products. In other words, a
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`semiconductor physical product, such as a silicon wafer, made by a manufacturing tool that uses
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`the patented fault detection method to identify manufacturing faults is a product “made by” a
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`patented process for detecting such faults. That is the exact type of conduct prohibited by
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`Section 271(g). See Bio-Tech. Gen. Corp. v. Genentech, Inc., 80 F.3d 1553, 1561 (Fed. Cir.
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`1996) (holding that a protein made by a host organism expressing an inserted plasmid was a
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`product “made by” a 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 STMicro’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 STMicro’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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`c. STMicro’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, STMicro argues that
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`“the claimed method does not make a tangible good.” (Dkt. 18 at 9.) But STMicro’s argument
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`is premised on a deliberate misreading of what the ’402 patent actually describes and claims,
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`which is a process for manufacturing physical products (“processing pieces”) such as silicon
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`wafers. The claims themselves demonstrate this fact.
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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 relate directly to the manufacture of the physical products and
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`the language of claim 1 readily reflects these activities.
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`3. The ’305 and ’248 Patents Involves the Making of Physical Products
`Such as Silicon Wafers, and Ocean’s Pleadings Reflect that Fact
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`STMicro construes the claimed invention of the ’305 and ’248 patents as “set[ting] a time
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`for when an action will happen” (Dkt. 18 at 11) but ignores 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, STMicro’s contention that these patents do not claim methods
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`for manufacturing a physical article—and particularly its assertion that “the claimed methods are
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`only tangentially related to the making of a physical product” (Dkt. 18 at 12)—is wrong.
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`As discussed in the specification, 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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`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 “schedul[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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`ev