Case 6:20-cv-01216-ADA Document 12 Filed 03/12/21 Page 1 of 26
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`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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`WESTERN DIGITAL
`TECHNOLOGIES, INC.,
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`Defendant.
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`
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`Case No. 6:20-cv-01216-ADA
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`ORAL ARGUMENT REQUESTED
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`DEFENDANT WESTERN DIGITAL TECHNOLOGIES, INC.’S
`MOTION TO DISMISS
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`I.
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`II.
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`Case 6:20-cv-01216-ADA Document 12 Filed 03/12/21 Page 2 of 26
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`TABLE OF CONTENTS
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`Introduction ..........................................................................................................................1
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`The Complaint Fails To State A Claim................................................................................2
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`A.
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`The Complaint Fails To State A Claim For Direct Infringement ............................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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`5.
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`6.
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`The ’402 Patent ............................................................................................4
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`The ’691 Patent ............................................................................................5
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`The ’538 Patent ............................................................................................7
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`The ’305 and ’248 Patents ...........................................................................9
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`The ’330 Patent ..........................................................................................10
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`The ’651 Patent ..........................................................................................11
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`The Complaint Fails To State A Claim For Induced Infringement .......................12
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`The Complaint Fails To State A Claim For Willful Infringement .........................17
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`B.
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`C.
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`III.
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`Conclusion .........................................................................................................................20
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`i
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`Case 6:20-cv-01216-ADA Document 12 Filed 03/12/21 Page 3 of 26
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`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`
`
`Cases
`
`Affinity Labs of Tex., LLC v. Blackberry Ltd.,
`No. W:13-CV-362, 2014 WL 12551207 (W.D. Tex. Apr. 30, 2014)................................13, 15
`
`Affinity Labs of Tex., LLC v. Toyota Motor N. Am., Inc.,
`No. W:13-CV-365, 2014 WL 2892285 (W.D. Tex. May 12, 2014) .......................................16
`
`AntiCancer, Inc. v. Pfizer Inc.,
`No. 11CV107 JLS, 2012 WL 13180611 (S.D. Cal. June 1, 2012) ............................................3
`
`Ashcroft v. Iqbal,
`556 U.S. 662 (2009) ...................................................................................................................2
`
`Bayer AG v. Housey Pharm., Inc.,
`340 F.3d 1367 (Fed. Cir. 2003)........................................................................................ passim
`
`Bell Atl. Corp. v. Twombly,
`550 U.S. 544 (2007) ...................................................................................................................2
`
`In re Bill of Lading,
`681 F.3d 1323 (Fed. Cir. 2012)................................................................................................13
`
`Blue Spike LLC v. Comcast Cable Commc’ns, LLC,
`No. 19-159-LPS-CJB, 2019 WL 4242930 (D. Del. Sept. 6, 2019) .........................................17
`
`Collins v. Morgan Stanley Dean Witter,
`224 F.3d 496 (5th Cir. 2000) ...................................................................................................14
`
`De La Vega v. Microsoft Corp.,
`No. 19-cv-00612-ADA, 2020 WL 3528411 (W.D. Tex. Feb. 11, 2020) ................................13
`
`Deere & Co. v. AGCO Corp.,
`No. 18-cv-827-CFC, 2019 WL 668492 (D. Del. Feb. 19, 2019) .............................................18
`
`Document Sec. Sys., Inc. v. Seoul Semiconductor Co.,
`No. 17-cv-00981-JVS, 2018 WL 6074582 (C.D. Cal. Feb. 5, 2018) ......................................19
`
`DSU Med. Corp. v. JMS Co.,
`471 F.3d 1293 (Fed. Cir. 2006)..........................................................................................13, 15
`
`Dynamic Data Techs. v. Google LLC,
`No. 19-cv-1529-CFC, 2020 WL 1285852 (D. Del. Mar. 18, 2020) ........................................18
`
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`Case 6:20-cv-01216-ADA Document 12 Filed 03/12/21 Page 4 of 26
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`
`
`Finjan, Inc. v. Cisco Sys. Inc.,
`No. 17-cv-00072-BLF, 2017 WL 2462423 (N.D. Cal. June 7, 2017) .....................................19
`
`Fluidigm Corp. v. IONpath, Inc.,
`No. C 19-05639 WHA, 2020 WL 408988 (N.D. Cal. Jan. 24, 2020) ......................................15
`
`Halo Elecs., Inc. v. Pulse Elecs., Inc.,
`136 S. Ct. 1923 (2016) .............................................................................................................19
`
`HSM Portfolio LLC v. Fujitsu Ltd.,
`No. 11-cv-770-RGA, 2012 WL 2580547 (D. Del. July 3, 2012) ............................................14
`
`Inhale, Inc v. Gravitron, LLC,
`No. 1-18-CV-762-LY, 2018 WL 7324886 (W.D. Tex. Dec. 10, 2018) ............................15, 18
`
`Kyocera Wireless Corp. v. Int’l Trade Comm’n,
`545 F.3d 1340 (Fed. Cir. 2008)................................................................................................16
`
`LaserDynamics USA, LLC v. Cinram Grp.,
`No. 15 Civ. 1629, 2015 WL 6657258 (S.D.N.Y. Oct. 30, 2015) ............................................15
`
`Linear Tech. Corp. v. Impala Linear Corp.,
`379 F.3d 1311 (Fed. Cir. 2004)................................................................................................13
`
`M & C Innovations, LLC v. Igloo Prods. Corp.,
`No. 4:17-CV-2372, 2018 WL 4620713 (S.D. Tex. Jul. 31, 2018) ..........................................19
`
`Meetrix IP, LLC v. Cisco Sys., Inc.,
`No. 1-18-CV-309-LY, 2018 WL 8261315 (W.D. Tex. Nov. 30, 2018) ..................................17
`
`Momenta Pharm., Inc. v. Teva Pharm. USA Inc.,
`809 F.3d 610 (Fed. Cir. 2015)....................................................................................................3
`
`MONEC Holding AG v. Motorola Mobility, Inc.,
`897 F. Supp. 2d 225 (D. Del. 2012) .........................................................................................16
`
`Phillip M. Adams & Assocs., LLC v. Dell Computer Corp.,
`519 F. App’x 998 (Fed. Cir. 2013) ............................................................................................3
`
`Polaris PowerLED Techs., LLC v. VIZIO, Inc.,
`No. SACV 18-1571 JVS, 2019 WL 3220016 (C.D. Cal. May 7, 2019) ..................................16
`
`Semiconductor Energy Lab. Co. Ltd. v. Chi Mei Optoelectronics Corp.,
`531 F. Supp. 2d 1084 (N.D. Cal. 2007) ...................................................................................14
`
`Sharafabadi v. Univ. of Idaho,
`No. C09-1043JLR, 2009 WL 4432367 (W.D. Wash. Nov. 27, 2009) ......................................3
`
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`
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`SoftView LLC v. Apple Inc.,
`No. 10-389-LPS, 2012 WL 3061027 (D. Del. July 26, 2012) .................................................14
`
`Unisone Strategic IP v. Life Techs. Corp.,
`No. 3:13-cv-1278, 2013 WL 5729487 (S.D. Cal. Oct. 22, 2013) ............................................16
`
`Välinge Innovation AB v. Halstead New England Corp.,
`No. 16-cv-1082-LPS-CJB, 2018 WL 2411218 (D. Del. May 29, 2018) .................................17
`
`Vita-Mix Corp. v. Basic Holding, Inc.,
`581 F.3d 1317 (Fed. Cir. 2009)................................................................................................13
`
`XpertUniverse, Inc. v. Cisco Sys., Inc.,
`No. 17-cv-03848-RS, 2017 WL 4551519 (N.D. Cal. Oct. 11, 2017) ......................................19
`
`ZitoVault, LLC v. Int’l Bus. Machines Corp.,
`No. 16-cv-0962-M, 2018 WL 2971131 (N.D. Tex. Mar. 29, 2018) ..................................14, 18
`
`Statutes
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`35 U.S.C. § 271(g) ................................................................................................................. passim
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`Other Authorities
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`Fed. R. Civ. P. 8 ...............................................................................................................................2
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`Fed. R. Civ. P. 12(b)(6)................................................................................................................1, 2
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`Case 6:20-cv-01216-ADA Document 12 Filed 03/12/21 Page 6 of 26
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`On December 31, 2020, Plaintiff Ocean Semiconductor LLC (“Ocean”) filed a complaint
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`against Defendant Western Digital Technologies, Inc. (“WDT”) alleging infringement of seven
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`patents (collectively, the “Asserted Patents”).1 D.I. 1 (“Compl.”). Pursuant to Fed. R. Civ. P.
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`12(b)(6), WDT moves to dismiss Ocean’s allegations of: (i) direct infringement, which Ocean
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`brought only under 35 U.S.C. § 271(g); (ii) induced infringement; and (iii) willful infringement.
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`I.
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`INTRODUCTION
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`Ocean’s Complaint fails to state a plausible claim for infringement.
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`Ocean’s direct infringement theory is predicated exclusively on 35 U.S.C. § 271(g),2
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`namely, that certain WDT “semiconductor products” imported into the United States are allegedly
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`“made by” processes patented by the Asserted Patents. But, under Federal Circuit precedent, the
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`accused products—as confirmed by the plain language of the claims, the Complaint, and Ocean’s
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`infringement theories outlined in the claim charts attached to the Complaint—are not “made by”
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`(i.e., manufactured by) a patented process as a matter of law.
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`Ocean’s boilerplate induced infringement claims fail because they do not plausibly allege
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`any underlying direct infringement. And, they also fail to plausibly allege that WDT had the
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`specific intent to induce others to infringe.
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`As to Ocean’s willful infringement claims, they fail for similar reasons. Not only does the
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`Complaint fail to plausibly allege infringement (which itself mandates dismissal) but Ocean did
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`1 The Asserted Patents include: U.S. Patent No. 6,725,402 (the “’402 patent”); U.S. Patent No.
`6,836,691 (the “’691 patent”); U.S. Patent No. 8,676,538 (the “’538 patent”); U.S. Patent No.
`6,907,305 (the “’305 patent”); U.S. Patent No. 6,968,248 (the “’248 patent”); U.S. Patent No.
`7,080,330 (the “’330 patent”); and U.S. Patent No. 6,660,651 (the “’651 patent”).
`2 35 U.S.C. § 271(g) recites, in relevant part, that “[w]hoever without authority imports into the
`United States or offers to sell, sells, or uses within the United States a product which is made by
`a process patented in the United States shall be liable as an infringer, if the importation, offer to
`sell, sale, or use of the product occurs during the term of such process patent.” (emphasis added).
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`Case 6:20-cv-01216-ADA Document 12 Filed 03/12/21 Page 7 of 26
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`not put WDT on notice of the alleged infringement.
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`Accordingly, because Ocean has failed to plausibly allege direct, induced, or willful
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`infringement, WDT respectfully submits that this Court dismiss Ocean’s Complaint in its entirety.
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`II.
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`THE COMPLAINT FAILS TO STATE A CLAIM
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`Federal Rule of Civil Procedure 8 requires Ocean to give WDT “fair notice of what the
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`claim is and the grounds on which it rests.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007)
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`(quotation and alteration omitted). This notice “requires more than labels and conclusions, and a
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`formulaic recitation of the elements of a cause of action will not do.” Id. Ocean must plead
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`“enough facts to state a claim to relief that is plausible on its face,” id. at 570, and show “more
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`than a sheer possibility that [WDT] has acted unlawfully.” Ashcroft v. Iqbal, 556 U.S. 662, 678
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`(2009).
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`A.
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`The Complaint Fails To State A Claim For Direct Infringement
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`Section 271(g) explicitly recites that liability only follows for importing, using, selling or
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`offering to sell “a product which is made by a process patented in the United States.”
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`35 U.S.C. § 271(g) (emphasis added). Per Federal Circuit precedent, to state a claim for
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`infringement under Section 271(g), a plaintiff must plausibly allege sufficient facts to demonstrate
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`that the patented process is directly part of the actual steps to manufacture the final product
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`itself. See Bayer AG v. Housey Pharm., Inc., 340 F.3d 1367, 1378 (Fed. Cir. 2003) (affirming
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`Rule 12(b)(6) dismissal of an infringement claim brought under § 271(g) where the patented
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`method was not a process used in making the final accused product imported into the United States
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`and construing the term “made by a process patented in the United States” to require that the
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`patented process “must be used directly in the manufacture of the product, and not merely as a
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`predicate process to identify the product to be manufactured.”) (emphasis added).
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`Similarly, the Federal Circuit has also held that § 271(g) does not apply to a claimed quality
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`control method, nor to a claimed testing method, where the claimed methods did not change the
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`accused products. See Momenta Pharm., Inc. v. Teva Pharm. USA Inc., 809 F.3d 610, 616–17
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`(Fed. Cir. 2015) (finding no direct infringement pursuant to § 271(g) where the claimed process
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`related to “tests [that do not] create or give new properties” to the accused products); Phillip M.
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`Adams & Assocs., LLC v. Dell Computer Corp., 519 F. App’x 998, 1005 (Fed. Cir. 2013) (finding
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`no direct infringement pursuant to § 271(g) where the claimed process related to certification
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`testing processes that were “not part of the process to ‘make’ the” accused products).
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`As discussed below in connection with each of the Asserted Patents, each asserted claim is
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`a method claim that is not directed to the making of any of the accused products, nor does it cause
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`a change to any accused product (which, per the Complaint, are all “semiconductor products”).
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`Compl. ¶ 7. At most, the asserted claims relate to processes for optimizing tools allegedly used in
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`semiconductor manufacturing, and thereby increasing the yield of the manufacturing facility
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`generally. The accused products are therefore not “made by” the claimed methods. And, as such,
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`the products do not (and cannot) infringe any asserted claim under 35 U.S.C. § 271(g) as a matter
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`of law. See Bayer, 340 F.3d at 1378; Sharafabadi v. Univ. of Idaho, No. C09-1043JLR, 2009 WL
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`4432367, at *5 (W.D. Wash. Nov. 27, 2009) (granting motion to dismiss where claimed process
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`was not directly used in the manufacture of the accused product); see also AntiCancer, Inc. v.
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`Pfizer Inc., No. 11CV107 JLS, 2012 WL 13180611, at *3 (S.D. Cal. June 1, 2012) (dismissing, at
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`the pleading stage, direct infringement allegations, where “[a]t most, the allegations support an
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`inference that Defendants practiced the patented process . . . in order to test” the accused product).
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`Case 6:20-cv-01216-ADA Document 12 Filed 03/12/21 Page 9 of 26
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`1.
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`The ’402 Patent
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`Ocean asserts direct infringement of independent method claim 1 of the ’402 patent, solely
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`based on 35 U.S.C. § 271(g). Compl. ¶¶ 95, 97.
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`Claim 1 of the ’402 patent is directed to a method for configuration of a processing tool—
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`not a semiconductor product to be manufactured—in response to the presence of a fault condition
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`in the processing tool. See Compl., Ex. C (’402 patent) at 7:10–38. In particular, the method
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`recited in claim 1 requires that a “first interface” receive “operational state data of a processing
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`tool related to the manufacture of a processing piece.” Id. at 7:9–11. The method sends the state
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`data from the first interface to a fault detection unit and “determine[s] if a fault condition exists
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`with the processing tool” itself. Id. at 7:15–27. “[I]n response to the presence of a fault condition,”
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`the method “perform[s] a predetermined action on the processing tool.” Id. at 7:28–30 (emphasis
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`added). The “predetermined action on the processing tool” “comprises sending a signal to the
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`first interface” (in claim 1) and further comprises “shutting down the processing tool” (in non-
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`asserted dependent claim 2). Id. at 7:38–42 (emphasis added). In other words, the claimed method
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`responds to the detection of a fault condition by configuring the processing tool, but does not
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`change the semiconductor product that may separately be manufactured using the tool.
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`Accordingly, the plain language of claim 1 makes clear that the claimed method is not directed to
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`a process for manufacturing a semiconductor product, but only to configuration of a separate tool.
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`The Complaint itself confirms that the claimed method is directed to configuring a
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`processing tool, rather than to steps for manufacturing a semiconductor product. The Complaint
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`states:
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`The inventions of the ’402 patent resolve technical problems related
`to the delay in reporting manufacturing faults during semiconductor
`manufacturing, which led to faulty semiconductor devices being
`produced. For example, the ’402 patent describes systems and
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`tool or halting a
`methods for shutting down a process
`manufacturing process in the presence of a manufacturing fault.
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`Compl. ¶ 44 (emphasis added).
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`Likewise, Ocean’s claim charts demonstrate that the allegedly infringing act is limited to
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`configuring a processing tool, rather than manufacturing a semiconductor product. See generally
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`Compl., Exs. I–J. The charts do not point to any step that results in a change to the accused
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`products. See generally id., Exs. I–J. For example, in one claim chart, Ocean cites to “models
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`[that] can detect problems with equipment and provide predictive maintenance capabilities that
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`reduce unscheduled downtime and product scrap.” Id., Ex. I at 12. These “predictive maintenance
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`capabilities,” however, are limited to configuration of the tool, and do not touch on a process for
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`directly manufacturing the accused semiconductor products. Similarly, in a second claim chart,
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`Ocean cites to a “predetermined action as part of a feedback system in order to update its database
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`and continue monitoring the processing pipeline to improve product and process control.” Id., Ex.
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`J at 23. Updating a database and monitoring a pipeline plainly do not relate to a process for directly
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`manufacturing a semiconductor product. In other words, Ocean’s infringement allegations are
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`limited to a process that does not directly make the final accused product that is imported into the
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`United States.
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`Accordingly, because Ocean’s assertions with respect to independent method claim 1 of
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`the ’402 patent are directed to configuring a processing tool—not directly manufacturing an
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`accused product—Ocean’s claim for direct infringement of the ’402 patent should be dismissed.
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`Bayer, 340 F.3d at 1378.
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`2.
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`The ’691 Patent
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`Ocean asserts direct infringement of independent method claim 1 of the ’691 patent, solely
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`based on 35 U.S.C. § 271(g). Compl. ¶¶ 177, 179.
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`Claim 1 of the ’691 patent is directed to a method for conducting a “process control activity
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`related to one of the tools” (not a semiconductor product to be manufactured) based on “filtered
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`metrology data.” See Compl., Ex. F (’691 patent) at 8:19–28 (emphasis added). The plain
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`language of claim 1 makes clear that the claimed method is not directed to a process for
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`manufacturing a semiconductor product, but rather only to data collection and processing related
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`to a tool.
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`This is further made plain by an analysis of (non-asserted) dependent claims. For example,
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`each of dependent claims 6 and 7 (which depend from claim 1) further limits the “conducting the
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`process control activity” recited in claim 1. Claim 6 requires “updating a state of a control model
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`employed by a process controller associated with one of the tools,” and claim 7 recites
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`“determining at least one parameter of an operating recipe employed by one of the tools.” Id. at
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`8:50–57 (emphasis added). Critically, these “process control activit[ies]” relate to the tool itself,
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`not a process for manufacturing a semiconductor product.
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`The Complaint confirms that asserted claim 1 is directed to configuration of the tool itself,
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`describing that the claimed method “improve[s] the performance of the process controller”
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`associated with the tool. Compl. ¶ 62. Evident in Ocean’s characterization of the ’691 patent is
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`that the patent, and specifically asserted claim 1, is not directed to a process for directly
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`manufacturing a semiconductor product manufactured by the tool. Again, Ocean’s infringement
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`allegations are limited to a process that does not directly make the final accused product imported
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`into the United States.
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`Likewise, Ocean’s claim charts demonstrate that the allegedly infringing act is limited to
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`configuring a processing tool, rather than manufacturing a semiconductor product. See generally
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`Compl., Exs. N–O. The charts again do not point to any step that results in a change to the accused
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`Case 6:20-cv-01216-ADA Document 12 Filed 03/12/21 Page 12 of 26
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`products. See generally id., Exs. N–O. For example, a first chart equates the claimed “process
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`control activity” to “identify[ing], for example, root causes at tool and sensor level, predict[ing]
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`yield problem, and yield driven control limits[.]” Id., Ex. N at 8. A second chart equates the
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`claimed “process control activity” to “detect[ing] early life failure of a particular die or chipset
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`package,” “identify[ing] losses due to problems in fabrication, test and design,” “optimiz[ing]
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`system performance across supply chain,” “fault-detection and classification,” and “trigger[ing]
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`alarms.” Id., Ex. O at 9–11. Such processes are limited to the configuration of the tool, and do
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`not relate to a process for directly manufacturing a semiconductor product.
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`Accordingly, because Ocean’s assertions with respect to independent method claim 1 of
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`the ’691 patent are directed to data collection and processing for a tool—not directly manufacturing
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`an accused product—Ocean’s claim for direct infringement of the ’691 patent should be dismissed.
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`Bayer, 340 F.3d at 1378.
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`3.
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`The ’538 Patent
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`Ocean asserts direct infringement of independent method claim 1 of the ’538 patent, solely
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`based on 35 U.S.C. § 271(g). Compl. ¶¶ 197, 199.
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`Claim 1 of the ’538 patent is directed to a method for “performing in a computer a fault
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`detection analysis,” “adjusting in said computer a weighting of [a] parameter based upon [a]
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`relationship of said parameter to [a] detected fault,” and “performing in said computer the fault
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`detection analysis . . . using said adjusted weighting.” See Compl., Ex. G (’538 patent) at 13:28–
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`39. The patent explains that, using the claimed method, “various tool state parameters to particular
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`wafers, may be modified to make the detection of similar faults more likely, or alternatively, less
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`likely.” Id. at 5:39–46. In other words, the claimed method only results in a change to the tool
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`itself, such as the “tool state parameters,” rather than a semiconductor product to be manufactured.
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`Case 6:20-cv-01216-ADA Document 12 Filed 03/12/21 Page 13 of 26
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`Moreover, the plain language of claim 1 makes clear that the claimed method is not directed to a
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`process for manufacturing a semiconductor product, but only to adjustment of tool state
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`parameters.
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`Further, the Complaint explains that asserted claim 1 is directed to solving “technical
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`problems related to inaccurately detecting faults in semiconductor manufacturing processes.”
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`Compl. ¶ 68. It describes that, in one example, the claimed method results in “adjusting a
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`weighting associating [sic] with the parameter based upon the relationship of the parameter to the
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`detected fault.” Id. Evident in Ocean’s characterization of the ’538 patent is that the patent, and
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`specifically asserted claim 1, is not directed to a process for directly manufacturing a
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`semiconductor product manufactured by the tool.
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`Ocean’s claim charts confirm that the allegedly infringing act is limited to configuring a
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`processing tool, rather than manufacturing a semiconductor product. See generally Compl., Exs.
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`P–Q. Here too, the charts do not point to any step that results in a change to the accused products.
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`See generally id., Exs. P–Q. For example, a first chart equates the claimed “performing . . . the
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`fault detection analysis” step to steps that result in: (i) “predictability of operations increases and
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`tool downtime and unnecessary parts replacements can be significantly reduced”; and (ii) “models
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`[that] can detect problems with equipment and provide predictive maintenance capabilities that
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`reduce unscheduled downtime and product scrap.” Id., Ex. P at 9–10. A second chart equates the
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`claimed “performing . . . the fault detection analysis” step to steps that: (i) “adjust[] processing of
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`the processing tool by updating recipe tables and processing/tool parameters;” and (ii) data for
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`“efficient fault detection.” Id., Ex. Q at 7–8. Such processes are limited to the configuration of
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`the tool, and do not touch on a process for directly manufacturing a semiconductor product.
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`Accordingly, because Ocean’s assertions with respect to independent method claim 1 of
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`Case 6:20-cv-01216-ADA Document 12 Filed 03/12/21 Page 14 of 26
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`the ’538 patent are directed to adjustment of tool state parameters—not directly manufacturing an
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`accused product—Ocean’s claim for direct infringement of the ’538 patent should be dismissed.
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`Bayer, 340 F.3d at 1378.
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`4.
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`The ’305 and ’248 Patents
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`Ocean asserts direct infringement of independent method claim 1 of the ’305 patent and
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`independent method claim 1 of the ’248 patent,3 solely based on 35 U.S.C. § 271(g). Compl.
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`¶¶ 115, 117, 135, 137.
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`Claim 1 of each of the ’305 and ’248 patents is directed to a “method for scheduling in an
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`automated manufacturing environment,” including steps for “detecting an occurrence of a
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`predetermined event in a process flow,” and “reactively scheduling an action . . . responsive to the
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`detection of the predetermined event.” See Compl., Ex. B (’305 patent) at 39:52–60; id., Ex. D
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`(’248 patent) at 30:40–48. Like the other patents, the plain language of the asserted ’305 and ’248
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`patent claims makes clear that the claimed methods are directed to optimizing the scheduling of
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`events in a manufacturing environment, and not to a process for manufacturing a semiconductor
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`product.
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`The Complaint likewise confirms that asserted claim 1 of each patent is directed to the
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`scheduling of manufacturing events, rather than the manufacture of a semiconductor product. The
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`Complaint explains that the patents “resolve technical problems related to utilization of process
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`tools and scheduling and execution control of factory control systems.” Compl. ¶¶ 38, 50.
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`Ocean’s claim charts further demonstrate that the allegedly infringing act is scheduling of
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`manufacturing events, rather than the manufacture of a semiconductor product. See generally
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`3 The ’248 patent is a continuation of the ’305 patent; and therefore, they are discussed together in
`this Section. See Compl., Ex. D (’248 patent), cover page.
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`Case 6:20-cv-01216-ADA Document 12 Filed 03/12/21 Page 15 of 26
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`Compl., Exs. K–L. The charts do not point to any step that results in a change to the any accused
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`product. See generally id., Exs. K–L. For example, the accused products are allegedly
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`manufactured using “the Applied Materials SmartFactory Productivity Solution including
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`SmartSched and Advanced Productivity Family (‘APF’) suite (‘SmartFactory’).” Id., Ex. K at 2;
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`Ex. L at 3. Ocean explains that the SmartFactory system “deliver[s] accurate production schedules
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`every few minutes.” Id., Ex. K at 2; Ex. L at 3. However, delivery of a production schedule is far
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`removed from—and is not an actual step in—the manufacture of a semiconductor product itself.
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`Accordingly, because Ocean’s assertions with respect to independent method claim 1 of
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`the ’305 and ’248 patents are directed to production scheduling—not directly manufacturing an
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`accused product—Ocean’s claims for direct infringement of the ’305 and ’248 patents should be
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`dismissed. Bayer, 340 F.3d at 1378.
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`5.
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`The ’330 Patent
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`Ocean asserts direct infringement of independent method claim 19 of the ’330 patent,
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`solely based on 35 U.S.C. § 271(g). Compl. ¶¶ 156, 158.
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`Claim 19 of the ’330 patent is directed to a “method for monitoring and controlling a
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`semiconductor fabrication process.” See Compl., Ex. E (’330 patent) at 21:5–6. The method
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`includes the steps, e.g., of “concurrently measuring one or more critical dimensions and overlay
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`in a wafer undergoing the fabrication process,” “determining if one or more of the critical
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`dimensions are outside of acceptable tolerances,” “developing control data,” and “feeding forward
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`or backward the control data to adjust one or more fabrication components or one or more
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`operating parameters associated with the fabrication components[.]” Id. at 21:5–30. Importantly,
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`the claim stops at any adjustment to the tool. In other words, the last claimed step is simply
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`“feeding forward or backward control data” that will ultimately be used to adjust one or more
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`Case 6:20-cv-01216-ADA Document 12 Filed 03/12/21 Page 16 of 26
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`fabrication components or operating parameters—all of which occur on the tool. Critically
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`missing from the claimed method is any next step that results in a change to the “wafer undergoing
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`the fabrication process.” Id. Instead, the claimed method only results in a change to the tool itself,
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`for example, by “feeding forward or backward the control data.” Id. Like the other patents, the
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`plain language of claim 1 makes clear that the claimed method is not directed to a process for
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`manufacturing a semiconductor product.
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`Similarly, Ocean’s claim chart confirms that the allegedly infringing acts are tolerance and
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`error detection on the tool, not on the actual manufacture of a semiconductor product. See
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`generally Compl., Ex. M.
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`Accordingly, because Ocean’s assertions with respect to independent method claim 19 of
`
`the ’330 patent are directed to tolerance and error detection—not directly manufacturing an
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`accused product—Ocean’s claim for direct infringement of the ’330 patent should be dismissed.
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`Bayer, 340 F.3d at 1378.
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`6.
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`The ’651 Patent
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`Ocean asserts direct infringement of independent method claim 19 of the ’651 patent,
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`solely based on 35 U.S.C. § 271(g). Compl. ¶¶ 74, 76.
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`Claim 19 of the ’651 patent is directed to a method for “adjusting [a] surface of [a] wafer
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`stage by actuating at least one of a plurality of pneumatic cylinders[.]” See Compl., Ex. A (’651
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`patent) at 12:62–66. The ’651 patent specification explains that the “present invention is generally
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`directed to a wafer stage having an adjustable surface or plane, such that the plane of the wafer
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`stage may be raised, lowered or tilted,” and that “[b]y adjusting the plane of the wafer stage, the
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`present invention may be useful in reducing or overcoming some of the problems described in the
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`background section of this application.” Id. at 5:23–29. The Complaint confirms this. It explains
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`Case 6:20-cv-01216-ADA Document 12 Filed 03/12/21 Page 17 of 26
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`that “the ’651 patent provides a process tool that includes an adjustable wafer stage that allows
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`positioning or re-positioning of the wafer stage, such as raising, lowering, and varying a tilt of the
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`surface of the wafer stage, in order to effectuate the deposition rates of semiconductor materials
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`formed on a wafer.” Compl. ¶ 32.
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`One claim element of asserted claim 19 generically recites “performing a process operation
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`on said wafer positioned on said wafer stage.” Compl., Ex. A at 13:1–2. Ocean’s claim chart,
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`however, confirms that Ocean’s allegations are limited to “process operations” that simply image
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`or map the wafer—i.e., process operations that do not cause a change to the wafer. See generally
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`id., Ex. H. For example, on page 10 of Ocean’s ’651 patent claim chart, Ocean alleges that the
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`process operatio