Case 6:20-cv-01215-ADA Document 33 Filed 07/14/21 Page 1 of 10
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`UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`v.
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`Plaintiff
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`Ocean Semiconductor LLC,
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`STMicroelectronics, Inc.,
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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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`Defendant.
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`JOINT MOTION FOR ENTRY OF SCHEDULING ORDER
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`The Court has instructed that the pre-trial schedules in seven separate actions currently
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`pending before this Court— Ocean Semiconductor LLC v. MediaTek Inc., No. 6:20-cv-1210-ADA
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`(W.D. Tex.); Ocean Semiconductor LLC v. NVIDIA Corp., No. 6:20-cv-1211-ADA (W.D. Tex.);
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`Ocean Semiconductor LLC v. NXP Semiconductors N.V., No. 6:20-cv-1212-ADA (W.D. Tex.);
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`Ocean Semiconductor LLC v. Renesas Electronics Corp., No. 6:20-cv-1213-ADA (W.D. Tex.);
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`Ocean Semiconductor LLC v. Silicon Labs Inc., No. 6:20-cv-1214-ADA (W.D. Tex.); Ocean
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`Semiconductor LLC v. STMicroelectronics Inc., No. 6:20-cv-1215-ADA (W.D. Tex.); and Ocean
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`Semiconductor LLC v. Western Digital Techs., Inc., No. 6:20-cv-1216-ADA (W.D. Tex.)—
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`“should go forward on the same schedule. Thus, there will be coordinated/joint Markman
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`proceedings, discovery, and pretrial briefing.” (See email communications between Henrik Parker,
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`counsel for Ocean, and Evan Pearson, Law Clerk to the Honorable Alan D. Albright, dated June
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`29-30, 2021.) While the parties in the seven actions have conferred over the last week, they have
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`been unable to agree on a pre-trial schedule. As a result, set forth separately below are the positions
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`Case 6:20-cv-01215-ADA Document 33 Filed 07/14/21 Page 2 of 10
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`of Ocean and of the defendants as to why their proposed schedule is more appropriate. The
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`Defendants in the related actions are proposing the same schedule for each related case.
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`Set out in Attachment A is a comparison of the proposed schedules containing separate
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`columns for each of the various deadlines contained within the Court’s most recent standard Order
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`Governing Proceedings – Patent Case (filed June 24, 2021) (“the OGP”) and setting out the dates
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`for each deadline: (a) per the Court’s default schedule in accordance with the OGP; (b) as proposed
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`by plaintiff Ocean Semiconductor LLC (“Ocean”); and (c) as proposed by the defendants.
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`Attachment B is a proposed Scheduling Order reflecting Ocean’s proposal.
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`Attachment C is a proposed Scheduling Order reflecting Defendants’ proposal.
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`Plaintiff Ocean Semiconductor’s Scheduling Proposal
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`Other than dealing with one minor internal inconsistency within the Court’s OGP, Ocean
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`believes that the Court’s default schedule as calculated using the time periods set out in the
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`Appendix to the OGP is wholly appropriate for all of the actions. This is particularly true since
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`the actions were already a full six months old before the Court set a designated June 30, 2021,
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`Case Management Conference (“CMC”) date meaning that, even under the default schedule, trial
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`will not occur until more than 23 months after filing. As such, Ocean proposes a schedule that
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`reaches both the Markman Hearing date and a date for trial in accordance with the default deadlines
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`measured from the CMC date of June 30, 2021.
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`The one difference between Ocean’s proposal and the Court’s default schedule arises
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`because of the inherent inconsistency between the “22 weeks after CMC (but at least 10 days
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`before Markman hearing)” (emphasis added) deadline for tutorials and the “23 weeks after CMC”
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`deadline for the Markman Hearing (and the extended date for defendants’ invalidity contentions).
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`To deal with this inconsistency, Ocean proposes to keep the Markman Hearing at the stated 23
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`weeks after the CMC (December 8, 2021) but move several of the various deadlines for the briefing
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`leading to the Markman Hearing back between two to seven days depending on the item. All post-
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`Markman Hearing deadlines track the Court’s default schedule.
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`Defendants’ proposal, on the other hand, needlessly extends the time period between
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`deadlines at least fourteen different times, usually by at least a week and, in many instances, by
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`two weeks.
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`Moreover, while defendants only argument during the initial meet and confers about a
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`Scheduling Order was that the pre-Markman Hearing schedule should be extended due to Ocean
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`asserting more than the normal number of patent claims causing them to allegedly need more time
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`for claim construction briefing. Nevertheless, six of their time interval extensions occur after the
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`Markman Hearing:
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` Extending the deadline for serving Final Infringement and Invalidity Contentions by
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`two weeks;
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` Extending the time between the close of fact discovery and service of opening expert
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`reports by a week;
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` Extending the time between opening expert reports rebuttal expert reports by a week;
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` Extending the time between rebuttal expert reports and the close of expert discovery
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`by a week;
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` Extending the time between the close of expert discovery and dispositive and Daubert
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`motions by two weeks; and
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` Extending the time between the filing of dispositive and Daubert motions and the filing
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`of Pretrial Disclosures by a week.
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`To demonstrate Ocean’s reasonableness, during the meet and confers about a proposed
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`schedule, Ocean offered to counterbalance defendants’ only then-alleged concern about needing
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`more time for claim construction briefing by extending various pre-Markman Hearing deadlines
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`along the lines of what the defendants propose (although there should still not be disproportionate
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`extensions) provided that defendants agreed to shorten the post-Markman Hearing deadlines in a
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`way that would get the actions to trial at roughly the time designated under the Court’s default
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`schedule. In other words, Ocean offered to give the defendants more time to deal with claim
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`construction provided that they would agree to compress the post-Markman hearing deadlines.
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`Defendants declined this offer.
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`During the initial meet and confers, no reasoned basis was given for defendants’ sought
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`post-Markman Hearing extensions. Only when providing their Joint Motion inserts to Ocean this
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`afternoon did defendants first mention a need for more time post-Markman Hearing based on a
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`contention that discovery will be “unusually lengthy and complex.” Defendants’ contention is
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`inaccurate.
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`As illustrated in the Complaint (and in Ocean’s Infringement Contentions, which Ocean
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`will provide to the Court if the Court would like to see them), the accused processes involved in
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`the manufacture of the infringing products are largely the same across all of the infringing products
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`such that discovery will be comparatively simple. The fact that these actions involve third parties
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`is no different from most other patent cases pending in this district. Further, whether or not the
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`original assignee of a patent is involved in this action, nor whether Ocean “controls” the named
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`inventors, has no substantial bearing on the complexity of discovery.
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`Further, many of the asserted patents overlap in substance and even claim scope. For
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`example, U.S. Patent Nos. 6,907,305 and 6,968,248 are parent and child so they share a common
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`specification as are the two stiffener patents asserted against NVIDIA (U.S. Patent Nos. 8,120,170
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`and 8,847,383). Three of the other patents (U.S. Patent Nos. 6,725,402, 6,836,691, and 8,676,538)
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`deal with the same concept—fault detection. Finally, while a significant number of claims have
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`been initially asserted, as with most patent cases, it is likely that the number will be narrowed as
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`the case proceeds. Indeed, the schedule includes two dates to meet and confer with respect to just
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`such narrowing. Thus, while it is not disputed that these actions involves multiple patents,
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`defendants have exaggerated their complexity.
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`The bottom line is that Ocean is committed to meeting this Court’s default deadline time
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`intervals despite any of the issues alleged by defendants and there is no reason why defendants—
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`significantly bigger and better-resourced—should not be able to do so as well.
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`Still further, defendants propose to have pretrial and possibly trial in February, 2023— a
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`time frame that coincides with lengthy Chinese New Year and when many companies shut down
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`for multiple weeks. Given that the two principal foundries in this action (TSMC and UMC) as
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`well as defendants NVIDIA and MediaTek are headquartered in China or Taiwan, defendants'
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`proposal will likely end up requiring further extensions in order to accommodate parties and
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`witnesses abroad. Thus, while it may appear on its face that defendants’ proposed schedule seeks
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`only a 4-5 month extension to the default schedule, it is almost certain that it will take substantially
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`longer to get to trial.
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`Beyond all of the rest, at a minimum, Ocean’s proposed schedule offers the best alternative
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`for proceeding promptly to trial. If it is determined at a later time that unusual events and/or
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`complexity necessitate revising the schedule to allow more time for particular pre-trial activities,
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`or to accommodate witnesses or the Court’s own schedule, the Court can re-visit the schedule, e.g.,
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`after the Markman hearing.
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`Defendants’ Scheduling Proposal 12
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`This case should proceed on an extended schedule because of its size, complexity, and
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`circumstances (there are six related cases filed by Ocean in this district alone). In the cases filed
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`in this district, Ocean asserts between seven and ten patents against seven different defendants
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`(only two of the patents are related); asserts between 74 and over 90 claims against each defendant;
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`and accuses hundreds of products of infringement for each defendant. Further compounding the
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`complexity, Ocean’s infringement allegations relating to ST Inc. implicate at least two third-party
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`semiconductor fabrication manufacturers and at least four third-party fabrication tool or software
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`vendors, as well as a third-party former patent owner and multiple third-party inventors. If there
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`ever was a case for a slightly extended schedule, this is it.
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`To account for the large number of asserted patents, asserted claims, accused products, and
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`third parties—and in accordance with the Court’s guidance provided on its Frequently Asked
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`Questions website—ST Inc. requests a schedule that extends the Court’s default schedule by
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`approximately five months to provide adequate time for ST Inc. to prepare it positions on claim
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`construction, invalidity, and noninfringement, and to complete discovery. In total, ST Inc. requests
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`a Markman hearing approximately three months later than the date suggested in the Court’s default
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`schedule and a dispositive motion deadline that is approximately four months later than the
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`exemplary schedule.
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`These accommodations are reasonable. The Court’s guidance explains that a case with 50
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`asserted claims—far fewer than the number asserted here, let along across all related cases—
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`1 Defendants asked Ocean to lower its number of asserted claims to 35 to try to address the
`scheduling issues, but Ocean refused.
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`2 All of the W.D. Tex. defendants are proposing the same schedule.
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`justifies an expanded schedule.3 The same is true here. For example, in another case where the
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`plaintiff asserted 60 claims before Markman, the Court extended the default schedule by eight
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`weeks. See Hammond Development International, Inc. vs Amazon.com, Inc., No. 6:19-cv-00355-
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`ADA (W.D. Tex. Oct. 18,2019) Dkt. 48 (setting Markman hearing 31 weeks after CMC where
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`default schedule provided for 23 weeks), Dkt. 47 (plaintiff’s commitment to select 60 asserted
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`claims). Here, where the plaintiff asserts anywhere from 20 to 40 more claims than in the Court’s
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`50-claim example, a five-month scheduling extension is more than justified.
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`In contrast to ST Inc.’s reasonable scheduling adjustments give the massive scale of the
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`cases, Ocean offered to negotiate a case schedule that would expand the pre-Markman schedule
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`relative to the Court’s default schedule but include a compressed post-Markman schedule. Ocean’s
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`offer runs contrary to the Court’s guidance, which supports an expanded post-Markman schedule
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`given the complexity of this case:
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`The Court sets the trial date based on the number of asserted patents and the
`perceived complexity of the case. For a case with fewer asserted patents and/or with
`a lower perceived complexity, the Court will set a shorter Markman to Trial
`timeline. For a case with more asserted patents and/or with a higher perceived
`complexity, the Court will set a longer Markman to Trial timeline. The timeline in
`the OGP is merely an example for a case where the number of asserted patents and
`perceived complexity of the case warrant a 12 month Markman to trial timeline. It
`is not the default timeline or the shortest timeline.
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`See https://www.txwd.uscourts.gov/for-attorneys/judge-albright-courtroom-faq/ (last visited July
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`13, 2021). Ocean has provided no legitimate justification for expediting the post-Markman
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`schedule given the scope and complexity of the case that it chose to file.
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`3 The Court’s Frequently Asked Questions guidance provides: “Claim Construction/ May 2020:
`Scheduling for large number of asserted claims[.] Q. If Plaintiff asserts a large number of claims,
`e.g., 50-60, how might that impact the claim construction schedule? A. Plaintiff can either reduce
`the number of claims or, if not, then the Court will extend the schedule to provide extra time for
`the parties to adequately brief and prepare for the Markman hearing.”
`https://www.txwd.uscourts.gov/for-attorneys/judge-albright-courtroom-faq/ (last visited July 13,
`2021).
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`Finally, adopting Ocean’s proposed schedule would materially prejudice ST Inc. as
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`discovery is expected to be unusually lengthy and complex. Third parties are alleged to implement
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`the purportedly infringing processes to make the hundreds of accused products for ST Inc. (as well
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`as the thousands of accused products across related cases), and various third parties provide the
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`tools and software used in these allegedly infringing processes. In most cases, those third parties—
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`not ST Inc.—control the key documents and witnesses that are relevant to the core issues of
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`infringement and validity. Further, the original assignee of the asserted patents is not a party to
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`this case, and, to the best of ST Inc.’s knowledge, Ocean does not control the inventors of the
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`asserted patents either. ST Inc.’s proposed extended schedule is thus reasonable because it offers
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`the parties the benefit of additional time to seek and obtain discovery from third parties on these
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`core issues.
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`Dated: July 14, 2021
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`By: /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 
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`Attorneys for Plaintiff, 
`Ocean Semiconductor LLC 
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`Respectfully submitted,
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`By: /s/ Tyler R. Bowen
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`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
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`Case 6:20-cv-01215-ADA Document 33 Filed 07/14/21 Page 9 of 10
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`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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`Case 6:20-cv-01215-ADA Document 33 Filed 07/14/21 Page 10 of 10
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that on July 14, 2021 a true and correct copy of the
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`foregoing document was served on all attorneys of record who have consented to electronic
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`service via the Court’s CM/ECF system per Local Rule CV-5(a)(3).
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`/s/ Alex Chan
` Alex Chan
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