Case 6:20-cv-01215-ADA Document 22 Filed 04/16/21 Page 1 of 4
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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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`STMICROELECTRONICS, INC.’S OPPOSITION TO OCEAN SEMICONDUCTOR
`LLC’S MOTION FOR LEAVE TO FILE SURREPLY TO STMICROELECTRONICS,
`INC.’s PARTIAL MOTION TO DISMISS
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`Case 6:20-cv-01215-ADA Document 22 Filed 04/16/21 Page 2 of 4
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`STMicroelectronics, Inc. (“ST Inc.”) opposes Ocean Semiconductor LLC’s (“Ocean”)
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`Motion for Leave to File a Surreply because Ocean fails to justify its request for more briefing.
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`I. Ocean’s Unsupported Statements About “New Arguments” in ST Inc.’s Reply Do Not
`Establish the Required “Exceptional and Extraordinary” Circumstances
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`Surreplies “are heavily disfavored.” Warrior Energy Servs. Corp. v. ATP Titan M/V, 551
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`F. App’x 749, 751 n.2 (5th Cir. 2014) (per curiam) (quoting Weems v. Hodnett, No. 10-CV-1452,
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`2011 WL 2731263, at *1 (W.D. La. July 13, 2011)). They “often amount to little more than a
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`strategic effort by the nonmovant to have the last word on a matter,” and it is proper to deny a
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`surreply request when a party “fails to demonstrate exceptional or extraordinary circumstances.”
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`Weems, 2011 WL 2731263, at *1. When a party “ma[kes] conclusory statements about new
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`arguments” without identifying any, it has failed to show such circumstances. Silo Rest. Inc. v.
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`Allied Prop. & Cas. Ins. Co., 420 F. Supp. 3d 562, 571 (W.D. Tex. 2019). Here, Ocean states that
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`ST Inc.’s Reply “asserts new arguments not presented in its original Motion” but does not describe
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`those arguments. See Dkts. 20 & 21 at 1, Ex. A. Ocean’s conclusory statement cannot support a
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`motion for leave. Silo Rest., 420 F. Supp. at 571.
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`II. Ocean Raised or Should Have Raised Its Arguments in Earlier Briefing
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`The arguments raised in Ocean Semiconductor’s proposed surreply could have and should
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`have been addressed in its Response. Dkts. 19 & 21, Ex. A; see Branch v. CEMEX, Inc., No. H-
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`11-1953, 2012 WL 2357280, at *9 (S.D. Tex. June 20, 2012), aff’d, 517 Fed. App’x 276 (5th Cir.
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`2013). Giving Ocean more pages to raise the arguments would serve no purpose, waste the Court’s
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`time and resources, and reward Ocean’s transparent ploy to get the last word.
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`First, Ocean has previously presented most of its arguments to the Court. The surreply
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`takes issue with ST Inc’s argument that 35 U.S.C. § 271(g) does not apply to processes that may
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`“relate” to manufacturing but are too far removed from making a product. Dkt. 21, Ex. A at 1–2;
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`Case 6:20-cv-01215-ADA Document 22 Filed 04/16/21 Page 3 of 4
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`Dkt. 20 at 2. ST Inc.’s Motion to Dismiss covered this issue, e.g., Dkt. 18 at 1, 6, 12, and Ocean
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`already attempted to address it in the Response, Dkt. 21, Ex. A at 1 (citing Dkt. 19 at 4). Similarly,
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`the surreply attacks ST Inc.’s argument that the processes claimed in the ’538 and ’402 patents do
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`not create or transform a physical product. Dkt. 21, Ex. A at 2–4; Dkt. 18 at 9. As Ocean admits,
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`ST Inc. raised this argument in its Motion, Dkt. 21, Ex. A at 2 (quoting Dkt. 18 at 9), and Ocean’s
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`Response addressed it. See Dkt. 19 at 4–10. In the proposed surreply, Ocean seizes on ST Inc.’s
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`statement in the Reply that the claimed methods of the ’305 and ’248 patents have “a remote
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`connection to actual product manufacture.” Dkt. 21, Ex. A at 2–6; Dkt. 20 at 7. But that argument
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`was central to ST Inc.’s Motion, which argued that the methods are “only tangentially related to
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`the making of a physical product” (Dkt. 18 at 12), and Ocean addressed the argument in the
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`Response (Dkt. 19 at 10–12). As to indirect infringement, Ocean’s proposed surreply likewise
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`rehashes arguments raised in its Response. Dkt. 21, Ex. A at 6–8; Dkt. 19 at 12–16. The surreply
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`addresses specific intent (Dkt. 21, Ex. A at 6) even though Ocean made the same arguments in the
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`Response (Dkt. 19 at 12–14). Ocean further argues that ST Inc. has not addressed Ocean’s
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`arguments about the existence of purported fact issues. Dkt. 21, Ex. A at 8. That is false. ST
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`Inc.’s Motion repeatedly states that there are no purported factual disputes that would preclude
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`dismissal (Dkt. 18 at 15–16), and its Reply does the same (Dkt. 20 at 9–10). No additional briefing
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`is needed on any of these issues because ST Inc. raised them in its Motion and Ocean already tried
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`to address them in its Response. See Dkt. 19 at 4–10.
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`Second, Ocean’s proposed surreply attempts to distinguish the Momenta case cited in ST
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`Inc.’s Motion. Dkt. 21, Ex. A at 2. Ocean could have made its arguments in the Response; it
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`simply chose not to do so. Dkt. 19 at 6.
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`III. Conclusion
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`Because Ocean cannot justify its surreply request, the Court should deny its motion.
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`-2-
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`Case 6:20-cv-01215-ADA Document 22 Filed 04/16/21 Page 4 of 4
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`Dated: April 16, 2021
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`Respectfully submitted,
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`/s/ Tyler R. Bowen
`Janice L. Ta, Texas 24075138
`JTa@perkinscoie.com
`Perkins Coie LLP
`500 West Second St., Suite 1900
`Austin, TX 78701
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`Chad S. Campbell (admitted pro hac vice)
`CSCampbell@perkinscoie.com
`Tyler R. Bowen (admitted pro hac vice)
`TBowen@perkinscoie.com
`Perkins Coie LLP
`2901 North Central Avenue, Suite 2000
`Phoenix, AZ 85012
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`Philip A. Morin (admitted pro hac vice)
`PMorin@perkinscoie.com
`Yudong Kim (admitted pro hac vice)
`YKim@perkinscoie.com
`Perkins Coie LLP
`11452 El Camino Real, Suite 300
`San Diego, CA 92130-2020
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`ATTORNEYS FOR DEFENDANT
`STMICROELECTRONICS, INC.
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`CERTIFICATE OF SERVICE
`Pursuant to the Federal Rules of Civil Procedure and Local Rule CV-5, I hereby certify
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`that, on April 16, 2021, all counsel of record who have appeared in this case are being served with
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`a copy of the foregoing via the Court’s CM/ECF system.
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`/s/ Tyler R. Bowen
`Tyler R. Bowen
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`-3-
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