Case 6:20-cv-01215-ADA Document 21-2 Filed 04/09/21 Page 1 of 13
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`Ocean Semiconductor LLC,
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`Plaintiff,
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`v.
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`STMicroelectronics, Inc.,
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`Defendant.
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`Civil Action No.: 6:20-cv-1215-ADA
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` JURY TRIAL DEMANDED
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` PATENT CASE
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`PLAINTIFF OCEAN SEMICONDUCTOR LLC’S SUR-REPLY
`IN SUPPORT OF ITS OPPOSITION TO STMICROELECTRONICS, INC.’S
`PARTIAL MOTION TO DISMISS
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`DATED: April 9, 2021
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`/s/ Alex Chan
`Timothy Devlin
`tdevlin@devlinlawfirm.com
`Henrik D. Parker
`hparker@devlinlawfirm.com   
`Alex Chan (State Bar No. 24108051)
`achan@devlinlawfirm.com   
`DEVLIN LAW FIRM LLC 
`1526 Gilpin Avenue 
`Wilmington, Delaware 19806 
`Telephone: (302) 449-9010 
`Facsimile: (302) 353-4251 
`
`
`
`
`
`Attorneys for Plaintiff, 
`Ocean Semiconductor LLC 
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`

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`Case 6:20-cv-01215-ADA Document 21-2 Filed 04/09/21 Page 2 of 13
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`TABLE OF CONTENTS
`INTRODUCTION .................................................................................................................. 1
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`I.
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`II. ARGUMENT .......................................................................................................................... 1
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`A.
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`STMicro Mischaracterizes Federal Circuit Authority on Section 271(g) ........................ 1
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`The ’538, ’402, ’305, and ’248 Patents Are Directed to the Manufacture of Products and
`B.
`Are Subject to Section 271(g) ..................................................................................................... 2
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`1.
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`2.
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`3.
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`4.
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`The ’538 Process Is Used in the Making of Semiconductors ....................................... 2
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`The ’402 Patent Is Used in the Making of Semiconductors ......................................... 3
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`The ’305 and ’248 Patents Are Used in the Making of Semiconductors ..................... 4
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`STMicro’s Reply Raises An Issue of Fact Precluding Dismissal ................................ 5
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`C.
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`Ocean’s Indirect Infringement Pleadings Are Based on Plausible Allegations of Fact ... 6
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`STMicro Concedes that, in All Events, Fact Issues Preclude Dismissal and that, at
`D.
`Worst, Leave to Amend Should Be Granted Rather Than Dismissal ......................................... 8
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`III. CONCLUSION .................................................................................................................... 8
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`i
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`Case 6:20-cv-01215-ADA Document 21-2 Filed 04/09/21 Page 3 of 13
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
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`Affinity Labs of Texas, LLC v. Blackberry Ltd.,
`C.A. No. W:13-cv-362 (W.D. Tex. Apr. 30, 2014) .................................................................... 8
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`Bayer AG v. Housey Pharms., Inc.,
`340 F.3d 1367 (Fed. Cir. 2003) .................................................................................................. 3
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`Bio-Tech. Gen. Corp. v. Genentech, Inc.,
`80 F.3d 1553 (Fed. Cir. 1996) .................................................................................................... 4
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`Momenta Pharms., Inc. v. Teva Pharms. USA Inc.,
`809 F.3d 610 (Fed. Cir. 2015) .................................................................................................... 2
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`Ormco Corp. v. Align Tech., Inc.,
`653 F. Supp. 2d 1016 (C.D. Cal. 2009). ..................................................................................... 5
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`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) .................................................................................................. 3
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`R+L Carriers, Inc. v. DriverTech LLC
`(In re Bill of Lading Transmission & Processing Sys. Patent Litig.),
`681 F.3d 1323 (Fed. Cir. 2012) .................................................................................................. 7
`
`Zond, LLC v. Renesas Elecs. Corp.,
`Civil Action No. 13-11625-NMG,
`2014 U.S. Dist. LEXIS 114363 (D. Mass. Aug. 15, 2014) ........................................................ 6
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`ii
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`Case 6:20-cv-01215-ADA Document 21-2 Filed 04/09/21 Page 4 of 13
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`I.
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`INTRODUCTION
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`STMicro’s Reply continues either to mischaracterize or ignore relevant precedent while
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`attempting to blur the early threshold requirements to survive a motion to dismiss. The cases,
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`from this Court, the Federal Circuit, and the Supreme Court, all support denial of STMicro’s
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`Motion to Dismiss.
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`When properly analyzed both factually and legally, it is clear that the methods of the
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`asserted patents fall squarely within the coverage of § 271(g). Moreover, fact issues relating to
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`their commercial viability would preclude dismissal of the § 271(g) causes of action. Ocean’s
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`pleading allegations more than sufficiently present a plausible case of indirect and willful
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`infringement, and fact issues preclude their dismissal as well.
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`II.
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`ARGUMENT
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`A.
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`STMicro Mischaracterizes Federal Circuit Authority on Section 271(g)
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`Contrary to STMicro’s characterization (Dkt. 20 at 2), Ocean has not “fashion[ed]” a
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`legal standard to suit its position, nor has Ocean asserted that each of the patents is covered by §
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`271(g) solely because their claimed processes “relate” to the production of semiconductors.
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`Rather, in accordance with Bayer and other precedent, Ocean has looked to the claims and
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`specification of the patents themselves and has identified aspects of each process demonstrating
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`that the claimed processes result in the making of physical products.
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`That Congress chose not to include “directly” in the statute in the context of a debate over
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`a provision not at issue here is of no moment. What matters is that there is no requirement that
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`a product be made “directly” from a patented process in order for there to be infringement.
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`(See Dkt. 19 at 4.) Bayer and the other authorities cited in Ocean’s Opposition simply confirm
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`and further illustrate this legal tenet. (Id. at 4.) Accordingly, while processes that produce
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`information, such as those at issue in Bayer, lie beyond the scope of § 271(g), there is no reason
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`1
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`Case 6:20-cv-01215-ADA Document 21-2 Filed 04/09/21 Page 5 of 13
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`why processes used in the creation of semiconductors should not be protected—and the case law
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`does not preclude such protection,.
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`STMicro’s continued reliance on Momenta (Dkt. 20 at 2, 3, 6) is also misplaced. That
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`case involved a testing process that was performed on a sampling of intermediate products that
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`destroyed the products on which the tests were performed. Momenta Pharms., Inc. v. Teva
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`Pharms. USA Inc., 809 F.3d 610, 616-17 (Fed. Cir. 2015). As a result, there could never be any
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`subsequent sale of any product on which the claimed method had been performed—only
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`products on which the claimed method had not been performed survived to be later imported and
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`sold.
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`Here, on the other hand, the patented methods recited in the ’538, ’402, ’305 and ’248
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`patents are performed during manufacturing and on all wafers. Moreover, there is no indication
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`that any wafers are destroyed nor that the claimed methods involve testing, much less the testing
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`of a finished product. Certainly, STMicro has pointed to none. This alone distinguishes
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`Momenta.
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`B.
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`The ’538, ’402, ’305, and ’248 Patents Are Directed to the Manufacture of
`Products and Are Subject to Section 271(g)
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`1.
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`The ’538 Process Is Used in the Making of Semiconductors
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`STMicro’s contention that the claims of the ’538 patent “do not create a physical
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`product” is contradicted by the unequivocal statement in the ’538 patent that its fault detection
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`method is “related to processing of a subsequent workpiece” (Dkt 1-8 at 13:38), as well as by
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`numerous other passages cited in Ocean’s Opposition. (See Dkt. 19 at 4-5.) These disclosures
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`cannot simply be ignored as STMicro would like this Court to do.
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`Moreover, STMicro’s recitation of applicable law continues to be incomplete. The full
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`quotation from Bayer cited by STMicro (Dkt. 20 at 4) reads: “Thus, the process must be used
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`directly in the manufacture of the product, and not merely as a predicate process to identify the
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`2
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`Case 6:20-cv-01215-ADA Document 21-2 Filed 04/09/21 Page 6 of 13
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`product to be manufactured.”1 340 F.3d at 1378. Ocean has never asserted that processes do
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`not need to be used in manufacturing semiconductors under § 271(g), only that they do not need
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`to expressly recite physical manufacture of products. (Dkt. 19 at 5.) STMicro’s attempt to blur
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`this distinction in the law is inappropriate and should be rejected. Similarly, the fact that the
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`patent at issue in Bayer “recited a product” (Dkt. 20 at 4) is of no moment. What mattered there
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`was that the product was not “‘made by’ those claimed processes.” Bayer AG v. Housey
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`Pharms., Inc., 340 F.3d 1367, 1378 (Fed. Cir. 2003).
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`Finally, STMicro cites no authority for its creative proposition that Ocean’s reliance on
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`multiple claims and the specification of a patent is somehow improper for the purpose of
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`determining the applicability of Section 271(g). (Dkt. 20 at 4.) In fact, claims are always
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`construed in light of the entirety of the patent’s disclosure, including the specification and other
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`claims. Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005).
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`2.
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`The ’402 Patent Is Used in the Making of Semiconductors
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`In the same vein, and contrary to STMicro’s inaccurate contention that the ’402 patent’s
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`“claimed steps do not create or transform a physical product” (Dkt. 20 at 6), the invention of the
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`’402 patent is directed to methods and systems for manufacturing products (e.g., silicon wafers)
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`by controlling processing tools (e.g., steppers) within a factory automation system. STMicro
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`simply ignores the fact that a “predetermined action on a processing tool”—as recited in method
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`claim 1—is an action performed during manufacturing. STMicro also ignores the fact that the
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`patented method involves (as provided in the specification), for example, minor adjustments to
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`the tool or the process recipe used to manufacture the semiconductor wafers. Without a doubt,
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`the claimed methods are used in the manufacturing of physical products, namely semiconductor
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`1 Unless otherwise noted, all emphasis in this brief has been added.
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`wafers. This relationship between the patented process and the accused products is more than
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`sufficient to withstand a motion to dismiss.
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`STMicro’s convoluted reading of Bio-Tech. Gen. (Dkt. 20 at 6) also fails. Contrary to
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`STMicro’s implication, even patented processes that were not explicitly addressed by Congress
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`in § 271(g)’s legislative history can enjoy the protection of that section. There nothing in Bio-
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`Tech. Gen. to suggest that a process must autonomously “create” a product in order to be covered
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`by § 271(g). Rather, the Federal Circuit there recognized that the patent at issue “explicity
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`contemplate[d] that the patented process will be used as part of an overall process for producing
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`hGH . . . .” Bio-Tech. Gen. Corp. v. Genentech, Inc., 80 F.3d 1553, 1561 (Fed. Cir. 1996).
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`3.
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`The ’305 and ’248 Patents Are Used in the Making of Semiconductors
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`Both the ’305 patent and the ’248 patent cover the complex scheduling of tools and wafer
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`lots in semiconductor fabrication processes. Without scheduling in any form, no manufacturing
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`could take place, including, for example, which semiconductor tools are used and when, what
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`processing recipes are deployed and at what rate, and where the wafers would be transported and
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`how.
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`STMicro’s argument that the ’305 and ’248 patents “merely schedule actions” (Dkt. 20 at
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`7) is a grossly mischaracterizes and oversimplifies the invention of each patent. Instead, as the
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`extensive citations from both patents in Ocean’s Opposition reveal (Dkt. 19 at 10-12), the
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`scheduling methods dictate when a wafer lot will be processed by a given tool and how many
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`wafers will be processed by that tool. The ’305 and ’248 processes directly participate in the
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`transformation of raw materials, substrates, into finished semiconductor products. Again, this is
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`more than sufficient to place the claimed methods within the purview of § 271(g).
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`Case 6:20-cv-01215-ADA Document 21-2 Filed 04/09/21 Page 8 of 13
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`4.
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`STMicro’s Reply Raises An Issue of Fact Precluding Dismissal
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`STMicro takes pains to argue that the Court should not consider the factual question of
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`whether a patented process contributes to the commercial viability of a product. (Dkt. 20 at 8.)
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`In so doing, STMicro relies once again on selective and misleading case law quotations. For
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`example, in Ormco, the court stated that it “agrees that the issue of commercial viability is not,
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`based on the authority cited by Ormco, dispositive, but nevertheless considers it herein as one
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`relevant factor.” Ormco Corp. v. Align Tech., Inc., 653 F. Supp. 2d 1016, 1026 n.1 (C.D. Cal.
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`2009). In other words, whether or not commercial viability is a dispositive issue with respect to §
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`271(g), it is nevertheless relevant and should be considered.
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`Related to this, it does not appear that the courts in Bayer and Momenta were ever even
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`asked to address the issue of commercial viability. The quote from Millenium Cryogenics that
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`STMicro argues was incomplete in Ocean’s Opposition (Dkt. 20 at 9) means the same thing
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`whether or not the extra language is inserted, i.e., whether a product is “made by” a process is a
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`question of fact. The language omitted from Ocean’s brief simply states that the separate
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`issueof whether a product has been materially changed—an issue that is irrelevant for the
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`purposes of the present motion—is also one of fact.
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`In sum, none of the cases discussed in STMicro’s Reply suggest that a court should not,
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`or may not, consider factual issues related to § 271(g) on a motion to dismiss.
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`More importantly, STMicro itself raises an issue of fact in its Reply when it argues that
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`the scheduling method of the ’305 and ’248 patents “has, at best, a remote connection to actual
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`product manufacture.” (Dkt. 20 at 7.) This is precisely the issue that led the court in Zond, LLC
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`v. Renesas Elecs. Corp., Civil Action No. 13-11625-NMG, 2014 U.S. Dist. LEXIS 114363, at *8
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`(D. Mass. Aug. 15, 2014), to deny a motion to dismiss a claim of § 271(g) patent infringement.
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`The court there ruled that it could not “determine as a matter of law that the production of plasma
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`is too remote from the production of semiconductor chips, i.e. forms just one of hundreds of
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`manufacturing steps, because that would require factual findings outside of the Fed. R. Civ. P.
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`12(b)(6) record.” Id. at *8.
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`C.
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`Ocean’s Indirect Infringement Pleadings Are Based on Plausible Allegations
`of Fact
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`While STMicro alleges that “[t]o properly plead inducement, Ocean must allege facts to
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`support that ST Inc. knew that an induced party’s acts constituted infringement” (Dkt. 20 at 9),
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`this is not correct. As an initial matter, STMicro does not deny knowledge of the asserted
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`patents, nor is Ocean’s Complaint “silent” regarding STMicro’s knowledge. (See Dkt. 19 at 13-
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`14.) Moreover, the Court is in no way bound to accept STMicro’s characterization of what can
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`be reasonably inferred from Ocean’s pleadings, as “nothing in Twombly or its progeny allows a
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`court to choose among competing inferences as long as there are sufficient facts alleged to render
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`the non-movant’s asserted inferences plausible.” R+L Carriers, Inc. v. DriverTech LLC (In re
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`Bill of Lading Transmission & Processing Sys. Patent Litig.), 681 F.3d 1323, 1340 (Fed. Cir.
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`2012).
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`Here, the inferences that STMicro had (and has) knowledge of the patents and
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`specifically intended (and continues to intend) for its foundry partners, manufacturers, and
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`importers to infringe under § 271(g) are both reasonable and plausible when viewed in light of
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`all the facts alleged in the Complaint. These facts include the technology alliance between
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`STMicro and UMC (Dkt. 19 at 13), STMicro’s encouragement of infringement by third party
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`importers (id. at 13-14), and STMicro’s promotion of the sale, use, and importation of its
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`products through its website, trade show presentations, and online customer forums. (Id. at 14-
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`15.)
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`Case 6:20-cv-01215-ADA Document 21-2 Filed 04/09/21 Page 10 of 13
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`STMicro also complains that Ocean Semi’s Opposition “fails to sufficiently allege the
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`required intent,” (Dkt. 20 at 9) but in so doing, ignores an entire paragraph of the Opposition
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`dedicated to the allegations that STMicro encouraged others to infringe:
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`encouraged [third-party importers] to infringe the Asserted Patents via
`importation under § 271(g), including ‘ordering or instructing’ them to import the
`accused products, ‘providing directions and other materials’ to them to enable
`such importation, and ‘conditioning the receipt of benefits (included but not
`limited to payment)’ to them on such importation.
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`(Dkt. 19 at 13-14.) The same paragraph also cites portions of the Complaint alleging inducement
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`based on STMicro’s encouragement of infringement by third-party manufacturers. (Id. at 11.)
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`This is far from “speculative” as STMicro argues. (Dkt. 20 at 9.) Nor is it analogous to the
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`complaint in Affinity Labs of Texas, LLC v. Blackberry Ltd., C.A. No. W:13-cv-362 (W.D. Tex.
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`Apr. 30, 2014), where the court found that “Plaintff merely relies on the existence of the
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`complaint to satisfy the knowing element for its induced infringement claim.” (See Dkt. 19-3 at
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`7.)
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`For the same reasons, and those additional ones set forth in its Opposition, Ocean has
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`sufficiently pleaded STMicro’s knowledge of infringement for willful infringement. STMicro is
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`wrong when it asserts that Ocean’s pleading of STMicro’s knowledge of the patents “just
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`repeat[s] the legal elements of willful infringement.” (Dkt. 20 at 10.) In fact, Ocean has pleaded
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`for each patent that Ocean placed STMicro on actual notice of the patent and on actual notice
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`that it had infringed, and was infringing, the patent. (Dkt. 1 at ¶¶ 82, 103, 123, 143, 163, 184,
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`205, 225.) The fact that the letters are not mentioned explicitly or described in the Complaint
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`does not make Ocean’s willfulness allegations any less plausible. Notably, STMicro never
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`denies that it received a notice letter.
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`Finally, STMicro’s simplistic re-assertion that Ocean was required to plead
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`“egregiousness” and that Ocean “does not even attempt to argue to the contrary” (Dkt. 20 at 10)
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`7
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`Case 6:20-cv-01215-ADA Document 21-2 Filed 04/09/21 Page 11 of 13
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`completely ignores Ocean’s de-bunking of this contention in its Opposition (Dkt. 19 at 17-18),
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`and in particular this Court’s own precedent in Frac Shack, Inc. v. Afd Petroleum Tex. Inc., No.
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`7:19-cv-00026-ADA, 2019 U.S. Dist. LEXIS 141114, at *at *2, 5 (W.D. Tex. Jun. 13, 2019),
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`holding that willfulness was sufficiently plead even when defendant argued that egregiousness
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`was not articulated in the complaint (along with additional cited cases).
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`D.
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`STMicro Concedes that, in All Events, Fact Issues Preclude Dismissal and
`that, at Worst, Leave to Amend Should Be Granted Rather Than Dismissal
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`STMicro entirely fails to address the final two sections of Ocean’s Opposition (see Dkt.
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`19 at 18-19). As such, STMicro concedes that fact issues would preclude dismissal and that, at
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`worst, the Court should grant leave to amend the Complaint rather than dismissing the Complaint
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`outright. Of course, given the numerous other flaws in STMicro’s motion, it should be denied in
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`its entirety.
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`III. CONCLUSION
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`For all of the reasons stated above and in Ocean’s Opposition, STMicro’s Motion to
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`Dismiss should be denied.
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`Case 6:20-cv-01215-ADA Document 21-2 Filed 04/09/21 Page 12 of 13
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`Dated: April 9, 2021
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`
`/s/ Alex Chan
`Timothy Devlin
`tdevlin@devlinlawfirm.com   
`Henrik D. Parker
`hparker@devlinlawfirm.com
`Alex Chan  
`State Bar No. 24108051  
`achan@devlinlawfirm.com   
`DEVLIN LAW FIRM LLC 
`1526 Gilpin Avenue 
`Wilmington, Delaware 19806 
`Telephone: (302) 449-9010 
`Facsimile: (302) 353-4251 
`  
`Attorneys for Plaintiff, 
`Ocean Semiconductor LLC 
`
`9
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`Case 6:20-cv-01215-ADA Document 21-2 Filed 04/09/21 Page 13 of 13
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`CERTIFICATE OF SERVICE
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`I hereby certify that on April 9, 2021, I caused a copy of this document to be served by
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`transmitting it via e-mail or electronic transmission to counsel of record for Defendant.
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`/s/ Alex Chan
`Alex Chan
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`10
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