Case 6:20-cv-01216-ADA Document 20 Filed 04/02/21 Page 1 of 16
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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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`Case No. 6:20-cv-01216-ADA
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`ORAL ARGUMENT REQUESTED
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`DEFENDANT WESTERN DIGITAL TECHNOLOGIES, INC.’S
`REPLY IN SUPPORT OF ITS MOTION TO DISMISS
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`Case 6:20-cv-01216-ADA Document 20 Filed 04/02/21 Page 2 of 16
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`TABLE OF CONTENTS
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`Page
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`I.
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`The Complaint Fails To State A Direct Infringement Claim ...............................................1
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`A.
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`B.
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`Ocean Mischaracterizes And Misunderstands Federal Circuit Authority On
`Section 271(g) ..........................................................................................................1
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`Ocean’s Allegations Fail Under Section 271(g) ......................................................3
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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 ............................................................................................3
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`The ’691 Patent ............................................................................................4
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`The ’538 Patent ............................................................................................5
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`The ’305 and ’248 Patents ...........................................................................6
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`The ’330 Patent ............................................................................................6
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`The ’651 Patent ............................................................................................7
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`II.
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`III.
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`IV.
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`The Complaint Fails To State An Inducement Claim ..........................................................8
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`The Complaint Fails To State A Willfulness Claim ............................................................9
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`Conclusion .........................................................................................................................10
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`Case 6:20-cv-01216-ADA Document 20 Filed 04/02/21 Page 3 of 16
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`TABLE OF AUTHORITIES
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`Page
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`Cases
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`Ashcroft v. Iqbal, 556 U.S. 662 (2009) ........................................................................................4, 5
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`Bayer AG v. Housey Pharm., Inc., 340 F.3d 1367 (Fed. Cir. 2003) ...................................... passim
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`Bayer Healthcare LLC v. Baxalta Inc., 989 F.3d 964 (Fed. Cir. 2021).........................................10
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`Bio-Tech. Gen. Corp. v. Genentech, Inc., 80 F.3d 1553 (Fed. Cir. 1996) .......................................3
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`DSU Med. Corp. v. JMS Co., 471 F.3d 1293 (Fed. Cir. 2006) ........................................................9
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`Eli Lilly & Co. v. Am. Cyanamid Co., 82 F.3d 1568 (Fed. Cir. 1996).............................................2
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`Fluidigm Corp. v. IONpath, Inc., No. C 19-0536389 WHA, 2020 WL 408988
`(N.D. Cal. Jan. 24, 2020) ...........................................................................................................9
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`Frac Shack, Inc. v. Afd Petroleum Tex. Inc., No. 7:19-cv-00026-ADA, 2019 U.S.
`Dist. LEXIS 141114 (W.D. Tex. Jun. 13, 2019) .....................................................................10
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`Millennium Cryogenic Techs., Ltd. v. Weatherford Artificial Lift Sys., No. H-12-
`0890-KPE, 2012 U.S. Dist. LEXIS 196638 (S.D. Tex. 2012)...................................................8
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`Momenta Pharm., Inc. v. Teva Pharm. USA Inc., 809 F.3d 610 (Fed. Cir. 2015) ................. passim
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`Parity Networks, LLC v. Cisco Sys., Inc., No. 6:19-CV-00207-ADA, 2019 WL
`3940952 (W.D. Tex. July 26, 2019) ....................................................................................9, 10
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`Phillip M. Adams & Assocs., LLC v. Dell Comput. Corp., 519 F. App’x 998 (Fed.
`Cir. 2013) ......................................................................................................................... passim
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`Reed v. Quicken Loans, Inc., No. 3:18-cv-3377-K, 2019 WL 4545010 (N.D. Tex.
`Sept. 3, 2019), report and recommendation adopted, 2019 WL 4538079 (N.D.
`Tex. Sept. 18, 2019) ...............................................................................................................8, 9
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`RK Sols. LLC v. Vitajoy USA, Inc., No. 18-cv-06608-CAS(Ex), 2018 WL
`6179492 (C.D. Cal. Nov. 11, 2018) ...........................................................................................8
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`Sharafabadi v. Univ. of Idaho, No. C09-1043JLR, 2009 WL 4432367 (W.D.
`Wash. Nov. 27, 2009) ...................................................................................................... passim
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`Takeda Pharm. USA, Inc. v. West-Ward Pharm., 785 F.3d 625 (Fed. Cir. 2015) ...........................9
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`Välinge Innovation AB v. Halstead New England Corp., No. 16-cv-1082-LPS-
`CJB, 2018 WL 2411218 (D. Del. May 29, 2018) ....................................................................10
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`Vega v. Maxim Integrated Prods., Inc., No. 5:15-cv-1138-DAE, 2016 WL
`9450607 (W.D. Tex. June 14, 2016) ......................................................................................8, 9
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`Statutes
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`35 U.S.C. § 271(g) ................................................................................................................. passim
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`iii
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`Case 6:20-cv-01216-ADA Document 20 Filed 04/02/21 Page 5 of 16
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`Ocean’s Opposition (D.I. 19) confirms that its Complaint fails to state a claim for direct,
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`induced, or willful infringement. The Opposition ignores Federal Circuit precedent that WDT
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`cited in its Motion to Dismiss (D.I. 12), misreads and mischaracterizes the cases Ocean does cite,
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`and seeks to impermissibly add new allegations found nowhere in the Complaint. The Complaint
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`fails to state any claim for relief and should be dismissed.
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`I.
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`THE COMPLAINT FAILS TO STATE A DIRECT INFRINGEMENT CLAIM
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`A.
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`Ocean Mischaracterizes And Misunderstands Federal Circuit Authority On
`Section 271(g)
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`Ocean’s (relatively simple, but incorrect) position on direct infringement can be
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`summarized as follows: because the patented processes are allegedly used “during” production of
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`the accused products, the processes allegedly “relate[] directly to the manufacture of [the]
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`products,” and therefore satisfy 35 U.S.C. § 271(g). See, e.g., Opp. at 4, 7 (emphases omitted).
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`Ocean’s theory has been expressly rejected by the Federal Circuit. E.g., Momenta Pharm., Inc. v.
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`Teva Pharm. USA Inc., 809 F.3d 610, 616 (Fed. Cir. 2015).
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`Tellingly, Ocean’s Opposition does not address the Federal Circuit Momenta and Phillips
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`M. Adams decisions (or the Sharafabadi district court decision, cited approvingly in Momenta)
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`that WDT raised in its Motion. See generally, Opp. at 3–15. Instead, the Opposition only discusses
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`Bayer, yet both mischaracterizes its holding and its applicability to Ocean’s § 271(g) claims. Id.
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`As WDT explained in its Motion (at pages 4–12), Ocean claims that WDT1 infringes the
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`following processes allegedly covered by the Asserted Patents:
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`’402: method for configuring a process tool in response to the presence of a fault condition
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`’691: method for conducting a process control activity related to one of the process tools
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`1 It is of no moment that WDT moved on certain asserted patents that other defendants did not
`move on; WDT’s request for dismissal is based on Ocean’s allegations as to WDT.
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`1
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`Case 6:20-cv-01216-ADA Document 20 Filed 04/02/21 Page 6 of 16
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`’538: method for performing a computer fault detection analysis
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`’305/’248: method for optimizing the scheduling of events in a manufacturing environment
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`’330: method for monitoring and controlling semiconductor fabrication processes
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`’651: method for adjusting/positioning a wafer stage surface
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`And, as WDT also explained in its Motion (at pages 2–12), none of the accused products
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`are “made by” (i.e., manufactured by) the above processes, as made clear by the Federal Circuit:
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`• The “[claimed] process must be used directly in the manufacture of the product, and not
`merely as a predicate process to identify the product to be manufactured.”2
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`• Processes involving the “identification and generation of data” do not qualify as steps
`in the manufacture of a final product under § 271(g).3
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`• The term “made” under § 271(g) covers “the creation or transformation of a product,
`such as by synthesizing, combining components, or giving raw materials new properties;”
`it does not extend to product testing, quality control or data generation—even if performed
`during the production of the product.4
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`• Similarly, “[t]he mere production of information is not covered by § 271(g),” even if the
`information is “integrated” into a manufacturing process.5
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`Accordingly, because Ocean’s entire theory of liability is predicated on a misunderstanding
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`of § 271(g), Ocean’s claims for direct infringement should be dismissed with prejudice.
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`2 Bayer AG v. Housey Pharm., Inc., 340 F.3d 1367, 1378 (Fed. Cir. 2003). Ocean ignores this
`direct statement in Bayer and argues that § 271(g) covers any process whatsoever that occurs
`during the manufacture of any physical article. Opp. at 3–4. But that is not what Bayer (or any
`Federal Circuit precedent) holds. Similarly, Ocean mischaracterizes Eli Lilly as standing for the
`proposition that “Congress specifically declined to require that a product be made ‘directly’ from
`a patented process to infringe under § 271(g).” Id. at 4 (citing Eli Lilly & Co. v. Am. Cyanamid
`Co., 82 F.3d 1568, 1576 (Fed. Cir. 1996); emphasis by Ocean). Not true. Congress did not use
`the term “directly” because of the “materially changed by subsequent processes” exception in
`§ 271(g)(1), which is not relevant to WDT’s Motion. Eli Lilly, 82 F.3d at 1576–77.
`3 Bayer, 340 F.3d at 1378.
`4 Momenta, 809 F.3d at 616 (citing, e.g., Phillip M. Adams & Assocs., LLC v. Dell Comput. Corp.,
`519 F. App’x 998, 1005 (Fed. Cir. 2013) and Sharafabadi v. Univ. of Idaho, No. C09-1043JLR,
`2009 WL 4432367, at *1, *5 (W.D. Wash. Nov. 27, 2009)).
`5 Phillip M. Adams, 519 F. App’x at 1005 (internal citation and quotation omitted).
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`2
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`Case 6:20-cv-01216-ADA Document 20 Filed 04/02/21 Page 7 of 16
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`B.
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`Ocean’s Allegations Fail Under Section 271(g)
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`1.
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`The ’402 Patent
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`Ocean argues that the claimed invention in the ’402 patent generally “relates to” the making
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`of physical products and the manufacture of such products. Opp. at 5–7. Ocean incorrectly claims
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`that, since WDT’s “wafers” are allegedly “made by a manufacturing tool that uses the patented
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`fault detection method to identify manufacturing faults,” the accused products are therefore “‘made
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`by’ a patented process for detecting such faults,” under § 271(g).6 Opp. at 5–6.
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`Ocean’s allegations amount to the theory that fault-identification information is used by
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`the “manufacturing equipment” during the manufacture of the accused products for purposes of
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`quality control (i.e., machine fault detection during manufacture). As discussed above, Ocean is
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`incorrect. Under § 271(g), “made by” does not include quality control or testing—even if used
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`during, or integrated into, a manufacturing process. See Momenta, 809 F.3d at 616; Phillip M.
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`Adams, 519 F. App’x at 1005; Sharafabadi, 2009 WL 4432367, at *1, *5.7
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`Critically, Ocean does not dispute that it failed to allege—let alone plausibly—that the
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`patented process in asserted claim 1 results in any change to an accused product. Opp. at 7–8. It
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`points only to the patent (including unasserted claims), which says nothing about whether any
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`6 The accused products are not individual “silicon wafers,” but instead are finished products such
`as connected home devices and memory. Compl. ¶¶ 7, 11. Moreover, contrary to Ocean’s
`assertion, WDT does dispute that “each limitation in claim 1 is practiced in the actual manufacture
`of WDT’s semiconductors.” Opp. at 6. The patented process configures a process tool, not the
`accused product that may be manufactured by the tool—as confirmed by Ocean’s actual
`infringement allegations. Mot. at 4–5.
`7 Ocean’s reliance on Bio-Tech. Gen. Corp. v. Genentech, Inc., 80 F.3d 1553 (Fed. Cir. 1996),
`Opp. at 6, is inapposite for the reasons expressed in Momenta. As the Momenta court explained,
`(i) “the patented process [in Bio-Tech.] created a tangible [intermediate] product used directly in
`the manufacture of a final polypeptide product” and (ii) the legislative history explicitly stated that
`the particular polypeptide process was covered by § 271(g). Momenta, 809 F.3d at 617 n.4.
`Neither are true for Ocean’s ’402 patent allegations.
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`accused product itself is changed. Id. Ocean does not, for example, identify any such allegation
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`in the Complaint (or claim charts). Whether the tool could hypothetically be used in a particular
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`manner is irrelevant to whether Ocean has alleged that the patented process in asserted claim 1
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`results in any change to an accused product. See Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009); see
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`also Momenta, 809 F.3d at 616; Phillip M. Adams, 519 F. App’x at 1005; Sharafabadi, 2009 WL
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`4432367, at *1, *5. Moreover, notwithstanding the fact that the “predetermined actions” identified
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`by Ocean are not alleged to be used to make an accused product, there is no credible dispute that
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`the actions—e.g., “shut[ting] down the tool” or “apprising a technician of any potential solutions
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`to rectify the fault condition”—do not change any accused product. See Momenta, 809 F.3d at
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`616; Phillip M. Adams, 519 F. App’x at 1005; Sharafabadi, 2009 WL 4432367, at *1, *5.
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`2.
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`The ’691 Patent
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`Ocean’s arguments against the ’691 patent largely mirror those for the ’402 patent. Ocean
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`asserts that “claim 1 covers the manufacture of physical products, and processes performed during
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`such manufacture,” and that the tool in the claimed process is “used for the direct manufacture of
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`physical products.” Opp. at 8–9. Even if true,8 Ocean’s theory again fails as a matter of law. It
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`amounts to nothing more than the process being used during the production of an accused product,
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`which, under Federal Circuit precedent, is insufficient. See Momenta, 809 F.3d at 616; see also
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`Phillip M. Adams, 519 F. App’x at 1005; Sharafabadi, 2009 WL 4432367, at *1, *5.
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`And, as with the ’402 patent, Ocean does not dispute it failed to allege—let alone
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`plausibly—that the process in asserted claim 1 of the ’691 patent results in any change to an
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`accused product. Opp. at 9. Here too, Ocean points only to the patent (including unasserted
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`8 As WDT explained in its Motion (D.I. 12), the patented process in asserted claim 1 acts on the
`tool for manufacturing, not on the accused product. Mot. at 6–7.
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`Case 6:20-cv-01216-ADA Document 20 Filed 04/02/21 Page 9 of 16
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`claims), which says nothing about whether an accused product is changed. Id. As Ocean does not
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`identify any allegation in the Complaint (or claim charts) that the accused products are changed as
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`a result of the patented process in asserted claim 1, dismissal as to the ’691 patent is warranted.
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`See Iqbal, 556 U.S. at 678; see also Momenta, 809 F.3d at 616; Phillip M. Adams, 519 F. App’x
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`at 1005; Sharafabadi, 2009 WL 4432367, at *1, *5.
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`3.
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`The ’538 Patent
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`Ocean argues that the ’538 patent is similar to the ’402 patent and thus passes § 271(g)
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`muster for the same reasons. Opp. at 9–10. It argues that the ’538 patented process occurs “during
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`production” of a product, which, in Ocean’s view, dictates that the patented process is “necessarily
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`directed to the manufacture of such products.” Id. at 11. But, again, this basic theory, even if
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`true,9 has been rejected by the Federal Circuit. See Momenta, 809 F.3d at 616; Phillip M. Adams,
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`519 F. App’x at 1005; see also Sharafabadi, 2009 WL 4432367, at *5.
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`And, as with the ’402 and ’691 patents, Ocean does not dispute it failed to allege—let alone
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`plausibly—that the patented process in asserted claim 1 of the ’538 patent results in any change to
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`the accused product. Opp. at 10. Ocean points only to the patent (including unasserted claims),
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`without any allegation from the Complaint (or claim charts) that the accused products are changed
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`as a result of the patented process. This failure warrants dismissal. See Iqbal, 556 U.S. at 678;
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`see also Momenta, 809 F.3d at 616; Phillip M. Adams, 519 F. App’x at 1005; Sharafabadi, 2009
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`WL 4432367, at *1, *5. Moreover, as discussed, the “fault detection” identified by Ocean is
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`information about the tool, with no changes at all to an accused product. See Momenta, 809 F.3d
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`at 616; Phillip M. Adams, 519 F. App’x at 1005; Sharafabadi, 2009 WL 4432367, at *1, *5.
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`9 As WDT explained in its Motion (D.I. 12), the patented process in asserted claim 1 acts on the
`tool for manufacturing, not on the accused product. Mot. at 7–9.
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`Case 6:20-cv-01216-ADA Document 20 Filed 04/02/21 Page 10 of 16
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`4.
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`The ’305 and ’248 Patents
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`Ocean asserts that “scheduling semiconductor fabrication processes is an indispensable
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`part of semiconductor manufacturing,” and “[w]ithout a means of scheduling, for example,
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`semiconductor lots and individual wafers for production, it would be impossible to coordinate the
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`complex operational steps and multiple tools used in a manufacturing facility.” Opp. at 11–12.
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`The Opposition is devoted exclusively to describing how the patent (including unasserted
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`claims) results in more efficient scheduling for the manufacturing process and tools. Id. at 11–13.
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`But, the scheduling of events—even in a manufacturing environment and even events that may
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`involve manufacturing a product—is at best “information” and plainly not covered by Section
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`271(g). See Momenta, 809 F.3d at 616; Bayer, 340 F.3d at 1377–78; Phillip M. Adams, 519 F.
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`App’x at 1005; Sharafabadi, 2009 WL 4432367, at *1, *5.
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`Moreover, the Opposition fails to explain how the patented process makes the accused
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`products. Nowhere does Ocean assert that the accused product is actually made by the alleged
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`patented process. See Opp. at 11–13. Nor does Ocean point to its Complaint at all. See id. These
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`failures further demonstrate that Ocean’s Complaint fails to plausibly allege direct infringement
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`of the ’305 or ’248 patent. See Momenta, 809 F.3d at 616; Bayer, 340 F.3d at 1377–78; Phillip
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`M. Adams, 519 F. App’x at 1005; Sharafabadi, 2009 WL 4432367, at *1, *5.
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`5.
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`The ’330 Patent
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`Ocean’s Opposition does not dispute that it has failed to plausibly allege that the accused
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`products are made by the patented process in asserted claim 19 of the ’330 patent. Opp. at 13–14.
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`The Opposition does not mention the Complaint at all, pointing only to the ’330 patent to argue
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`that “the claimed method [in asserted claim 19] is performed directly on semiconductor wafers”
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`and that there is allegedly no difference between “making a semiconductor” and “controlling a
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`Case 6:20-cv-01216-ADA Document 20 Filed 04/02/21 Page 11 of 16
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`semiconductor fabrication process.” Id. However, there is a difference—and a fundamental one
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`at that. Ocean’s cited language appears in the preamble; it says nothing about what the actual
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`claimed steps are. Compl., Ex. E (’330 patent) at 21:5–6. The relevant inquiry is what those
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`claimed steps are, as they relate to the accused product that allegedly results. Here, as WDT
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`explained in its Motion (at pages 10–11), Ocean’s ’330 patent assertions stop at adjustments to the
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`tool used to manufacture a product, i.e., the claimed steps do not result in a change to the product.
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`Moreover, Ocean does not dispute that the allegedly infringing acts involve tolerance and
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`error detection on the tool, nor that it has failed to allege that any change to the accused product
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`occurs as a result of the patented process in asserted claim 19. Opp. at 13–14. Ocean points
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`only (without explanation) to the “adjusting one or more fabrication components . . .” step in claim
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`19 and to unasserted claim 21. Again, whether the tool could hypothetically be used in a particular
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`manner is irrelevant to whether the patented process in asserted claim 19 has been used to make
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`an accused product. This failure necessitates dismissal as to the ’330 patent. See Momenta, 809
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`F.3d at 616; Bayer, 340 F.3d at 1377–78; Phillip M. Adams, 519 F. App’x at 1005; Sharafabadi,
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`2009 WL 4432367, at *1, *5.
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`6.
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`The ’651 Patent
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`Ocean’s Opposition focuses on the final step of asserted claim 19 of the ’651 patent:
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`“performing a process operation on [a] wafer.” Opp. at 19. While the specification identifies
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`certain “process operations” (such as deposition or etching), the claim itself does not define what
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`a “process operation” is. Thus, it is of no moment what a hypothetical “process operation” may
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`be. The relevant inquiry is what Ocean has plausibly alleged. As explained in WDT’s Motion (at
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`page 12), the alleged “process operations” (i.e., scanning or imaging) do not result in a change to
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`WDT wafers. Ocean does not allege exposure as a “process operation;” it only alleges that other
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`process operations (i.e., scanning or imaging) occur in preparation for exposure (i.e., so that
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`“exposure can start”). Compl., Ex. H at 9–10. Accordingly, dismissal is warranted for the ’651
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`patent. See Momenta, 809 F.3d at 616; Phillip M. Adams, 519 F. App’x at 1005; Sharafabadi,
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`2009 WL 4432367, at *1, *5.
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`Because Ocean has failed to plausibly state a claim for direct infringement,10 and such
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`claims cannot be remedied, all should be dismissed with prejudice.
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`II.
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`THE COMPLAINT FAILS TO STATE AN INDUCEMENT CLAIM
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`Ocean’s lack of plausible direct infringement claims bar its inducement claims.
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`Ocean also does not dispute that it failed to put WDT on notice. Instead, Ocean seeks to
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`add new allegations regarding the alleged relationship between WDC and WDT. See Opp. at 15
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`(citing, e.g., Chan Decl., Ex. 1). Ocean cannot, in its Opposition, add new allegations beyond the
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`pleadings. See, e.g., Vega v. Maxim Integrated Prods., Inc., No. 5:15-cv-1138-DAE, 2016 WL
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`9450607, at *4 (W.D. Tex. June 14, 2016); Reed v. Quicken Loans, Inc., No. 3:18-cv-3377-K,
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`2019 WL 4545010, at *2–*3 (N.D. Tex. Sept. 3, 2019), report and recommendation adopted, 2019
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`WL 4538079 (N.D. Tex. Sept. 18, 2019).11
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`Next, Ocean argues that it has plausibly alleged specific intent. Opp. at 16–17. Not so.
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`10 Ocean relies on Millennium Cryogenic Techs., Ltd. v. Weatherford Artificial Lift Sys. for the
`proposition that “271(g) liability is a classic fact question reserved for the trier of fact.” Opp. at
`20 (citing No. H-12-0890-KPE, 2012 U.S. Dist. LEXIS 196638, at *8 (S.D. Tex. 2012)).
`Millennium is readily distinguishable. The Millennium court needed to address a § 271(g)
`exception not at issue in WDT’s Motion, i.e., whether the accused product made by the patented
`process was “materially changed by a subsequent process.” 2012 U.S. Dist. LEXIS 196638, at *8.
`11 RK Sols. LLC v. Vitajoy USA, Inc., cited by Ocean at page 16 of its Opposition, supports WDT’s
`position. No. 18-cv-06608-CAS(Ex), 2018 WL 6179492 (C.D. Cal. Nov. 11, 2018). In RK Sols.,
`the parent was a named defendant and the complaint included allegations of the relationship
`between the parent and subsidiary making it plausible that the parent’s knowledge could be
`imputed. See id. at *4; see also 2018 WL 7348759 (RK’s First Amended Complaint) ¶¶ 7, 15–18.
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`Ocean points to the alleged relationships between WDT and importers and manufacturers,
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`asserting that WDT is involved in, and controls, the manufacturing and importation of the accused
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`products. Id. But Ocean has not alleged “‘culpable conduct, directed to encouraging another’s
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`infringement.’” Parity Networks, LLC v. Cisco Sys., Inc., No. 6:19-CV-00207-ADA, 2019 WL
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`3940952, at *2 (W.D. Tex. July 26, 2019) (quoting DSU Med. Corp. v. JMS Co., 471 F.3d 1293,
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`1306 (Fed. Cir. 2006) (en banc)). Nor has Ocean alleged an “‘affirmative intent’ to induce others
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`to infringe.” Fluidigm Corp. v. IONpath, Inc., No. C 19-0536389 WHA, 2020 WL 408988, at *3
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`(N.D. Cal. Jan. 24, 2020) (emphasis in original; quoting Takeda Pharm. USA, Inc. v. West-Ward
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`Pharm., 785 F.3d 625, 631 (Fed. Cir. 2015)). At best, Ocean has pleaded a purported “intent to
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`cause the acts that produce direct infringement,” which is insufficient under Federal Circuit
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`authority. See DSU Med., 471 F.3d at 1306; see also Parity Networks, 2019 WL 3940952, at *2
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`(pleading inducer “had knowledge of the direct infringer’s activities” is insufficient to plead
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`specific intent).12
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`III. THE COMPLAINT FAILS TO STATE A WILLFULNESS CLAIM
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`Ocean’s lack of plausible direct infringement claims bar its willfulness claims.
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`Additionally, as with inducement, Ocean does not dispute that it failed to put WDT on
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`notice. See Opp. at 18. Instead, it again improperly seeks to add new allegations beyond the
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`pleadings. See Vega, 2016 WL 9450607, at *4; Reed, 2019 WL 4545010, at *2–*3.
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`Ocean also does not dispute that its pre-suit “notice” letters do not identify any specific
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`allegedly infringing tools or systems. Opp. at 18–19. Ocean cites to Parity Networks for the
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`proposition that knowledge of the patents alone is sufficient. Id. at 19 (citing Parity Networks,
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`12 Ocean focuses, in large part, on the “2020 Financial Disclosure” it attributes to WDT. Opp. at 17
`(citing Chan Decl., Ex. 2). Although the Complaint references a WDC 10-K, this allegation was
`not included; moreover, the disclosure is for WDC, not WDT. See Compl. ¶ 8.
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`9
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`Case 6:20-cv-01216-ADA Document 20 Filed 04/02/21 Page 14 of 16
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`2019 WL 3940952, at *2–*3). But the circumstances in Parity Networks were quite different.
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`First, the plaintiff sent letters to the actual defendant, unlike here. Compare No. 6:19-cv-207-ADA
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`D.I. 1 with D.I. 11-2, 11-3. Second, unlike here, allegations of infringement did not depend on
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`unnamed tools or systems allegedly used for § 271(g) infringement. See id., D.I. 1; Parity
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`Networks, 2019 WL 3940952, at *2–*3; see also Mot. at 18–19.13
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`Last, Ocean does not dispute the Complaint fails to allege egregious misconduct. See Opp.
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`at 19–20. It argues that “this Court has held [that] pleading egregiousness is not required . . . .”
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`Id. (citing Frac Shack, Inc. v. Afd Petroleum Tex. Inc., No. 7:19-cv-00026-ADA, 2019 U.S. Dist.
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`LEXIS 141114, at *2, *5 (W.D. Tex. Jun. 13, 2019)) (emphasis by Ocean). There is no such
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`holding in Frac Shack. See Frac Shack, 2019 U.S. Dist. LEXIS 141114, at *2, *5. Moreover,
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`Ocean’s assertion is contrary to the law. See Bayer Healthcare LLC v. Baxalta Inc., 989 F.3d 964,
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`988 (Fed. Cir. 2021) (affirming judgment as a matter of law of no willfulness because defendant’s
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`“conduct [did not rise] to the level of wanton, malicious, and bad-faith behavior”) (internal
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`quotation omitted); id. (“Knowledge of the asserted patent and evidence of infringement is
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`necessary, but not sufficient, for a finding of willfulness. Rather, willfulness requires deliberate
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`or intentional infringement.”); see also Mot. at 19.
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`IV. CONCLUSION
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`For the reasons set forth in WDT’s Motion to Dismiss (D.I. 12) and above, WDT
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`respectfully requests the Court dismiss the claims for direct, induced, and willful infringement
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`with prejudice. Pursuant to Local Rule CV-7(g), WDT requests an oral hearing on this motion.
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`13 While Ocean argues that “WDT cites no case law from this district requiring at the pleading
`stage that the allegations of notice discuss specific infringing tools or systems,” and dismisses as
`“irrelevant” the out-of-district cases that WDT cited in its Motion, see Opp. at 19, it ignores that
`Parity Networks relies, as does WDT, on Välinge Innovation AB v. Halstead New England Corp.,
`No. 16-cv-1082-LPS-CJB, 2018 WL 2411218, at *13 (D. Del. May 29, 2018).
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`10
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`Case 6:20-cv-01216-ADA Document 20 Filed 04/02/21 Page 15 of 16
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`Dated: April 2, 2021
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`Respectfully submitted,
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` /s/ L. Kieran Kieckhefer
`David P. Whittlesey
`Shearman & Sterling LLP
`300 West 6th Street, Suite 2250
`Austin, TX 78701
`Telephone: 512.647.1907
`David.Whittlesey@Shearman.com
`
`L. Kieran Kieckhefer (pro hac vice)
`Shearman & Sterling LLP
`535 Mission Street, 25th Floor
`San Francisco, CA 94105
`Telephone: 415.616.1124
`Kieran.Kieckhefer@Shearman.com
`
`Matthew G. Berkowitz (pro hac vice)
`Patrick R. Colsher* (pro hac vice)
`Yue (Joy) Wang (pro hac vice)
`Shearman & Sterling LLP
`1460 El Camino Real, 2nd Floor
`Menlo Park, CA 94025
`Telephone: 650.838.3737
`Matt.Berkowitz@Shearman.com
`Patrick.Colsher@Shearman.com
`Joy.Wang@Shearman.com
`
`*Admitted only in NY and NJ
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`Ahmed E. ElDessouki (pro hac vice)
`Shearman & Sterling LLP
`599 Lexington Ave.
`New York, NY 10022
`Telephone: 212.848.4908
`Ahmed.ElDessouki@Shearman.com
`
`Counsel for Defendant Western Digital Techs., Inc.
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`Case 6:20-cv-01216-ADA Document 20 Filed 04/02/21 Page 16 of 16
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certified that a true and correct copy of the above and foregoing
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`document has been served on April 2, 2021, to all counsel of record who are deemed to have
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`consented to electronic service via the Court’s CM/ECF.
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` /s/ L. Kieran Kieckhefer
` L. Kieran Kieckhefer
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