Case 6:22-cv-00466-ADA-DTG Document 75 Filed 05/23/23 Page 1 of 12
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`Case. No. 6:22-CV-0466-ADA-DTG
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`ADVANCED SILICON
`TECHNOLOGIES LLC,
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`
`
`v.
`
`NXP SEMICONDUCTORS N.V.,
`NXP B.V., and
`NXP USA, INC.,
`
`
`
`Plaintiff,
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`Defendants.
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`
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`DEFENDANT NXP USA, INC.’S ANSWER TO PLAINTIFF ADVANCED SILICON
`TECHNOLOGIES LLC’S FIRST AMENDED COMPLAINT
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`Defendant NXP USA, Inc. (“NXP”)1 responds to Plaintiff Advanced Silicon Technologies
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`LLC’s (“AST”) First Amended Complaint for Patent Infringement (“FAC”) as follows:
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`NXP USA denies infringement of any asserted claim of U.S. Patent Nos. 7,804,435 (the
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`“’435 patent”); and 8,933,945 (the “’945 patent”) (collectively, “the Asserted Patents”). NXP also
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`denies that AST is entitled to its requested relief or any other relief related to its allegations in the
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`FAC. NXP further denies each and every allegation contained in the FAC unless expressly
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`admitted in the following paragraphs. Any admitted factual allegation in the FAC is admitted only
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`as to the specific admitted fact(s), and not as to any purported conclusion, characterization,
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`implication, or speculation that may follow from the fact(s) as admitted.
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`NATURE OF THE ACTION
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`1. AST sues to stop, and to recover damages caused by, NXP’s infringement of AST’s
`patents.
`
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`1 The parties have filed a Stipulation of Dismissal Without Prejudice of Defendants NXP
`Semiconductors N.V. and NXP B.V. Dkt. 34. Thus, the remaining defendant is NXP USA, Inc.
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`Case 6:22-cv-00466-ADA-DTG Document 75 Filed 05/23/23 Page 2 of 12
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`ANSWER: NXP admits that AST purports to state a claim for patent infringement, but
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`NXP denies that it infringed any patents and denies that AST is entitled to damages. NXP
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`denies any remaining allegations in Paragraph 1.
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`2. This action involves patents that stem from the research and design of innovative and
`proprietary technology developed by AST’s licensee, Advanced Micro Devices, Inc.
`(“AMD”). AMD is an American multi-national company and pioneer of cutting-edge
`graphics processor and microprocessor technology. The asserted patents cover inventions
`relating to important aspects of AMD’s integrated circuit and microfabrication technology.
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`ANSWER: NXP is without knowledge or information sufficient to form a belief as to the
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`allegations of Paragraph 2, and therefore denies the allegations in Paragraph 2.
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`3. Tracing its history back to Philips and Motorola Semiconductors, NXP in its present
`form took shape in 2015 through a merger with Freescale Semiconductor. See, e.g.,
`https://www.nxp.com/company/about-nxp/history:NXP-HISTORY.
`
`ANSWER: NXP denies the allegations in Paragraph 3.
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`PARTIES
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`4. Plaintiff Advanced Silicon Technologies LLC is a Delaware limited liability company
`with a principal place of business in Portland, Maine, and a mailing address of 533 Congress
`Street, Portland, Maine 04101.
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`ANSWER: NXP is without knowledge or information sufficient to form a belief as to the
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`allegations of Paragraph 4, and therefore denies the allegations in Paragraph 4.
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`5. Defendant NXP USA, Inc. is a Delaware corporation with a principal place of business
`at 6501 W. William Cannon Drive, Austin, Texas 78735.
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`ANSWER: NXP admits that NXP USA, Inc. is a Delaware corporation with its principal
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`place of business located at 6501 W. William Cannon Drive, Austin, TX 78735. NXP
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`denies any remaining allegations in Paragraph 5.
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`6. AST's Original Complaint (ECF No. 1) named NXP Semiconductors N.V. and NXP
`B.V. as defendants. AST dismissed those parties without prejudice subject to conditions set
`forth in a stipulation filed with the Court (ECF No. 34).
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`ANSWER: NXP USA admits the allegations in Paragraph 6.
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`Case 6:22-cv-00466-ADA-DTG Document 75 Filed 05/23/23 Page 3 of 12
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`JURISDICTION AND VENUE
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`7. This Court has subject matter jurisdiction under 28 U.S.C. §§ 1331 and 1338(a)
`because this action presents a federal question under the patent laws of the United States,
`including 35 U.S.C. §§ 271, 281, 284, and 285.
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`ANSWER: NXP USA admits the allegations in Paragraph 9.
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`8. This Court specific or, alternatively, general jurisdiction over NXP because it is
`registered to do business in the State of Texas and operates its U.S. headquarters and a
`manufacturing facility
`in Austin, Texas. See https://www.nxp.com/company/about-
`nxp/worldwide-locations/united-states:USA. NXP has caused acts of infringement to occur
`in this District in violation of U.S.C. § 271. For example, on information and belief, at its
`Austin, Texas facilities NXP designs, develops, tests, uses, markets, imports, exports, offers
`to sell, and sells infringing products.
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`ANSWER: Without admitting personal jurisdiction is proper here, NXP does not contest
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`personal jurisdiction for purposes of this litigation only. NXP USA denies that it “has
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`caused acts of infringement to occur” and furthermore denies that it “designs, develops,
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`tests, uses, markets, imports, exports, offers to sell, and sells infringing products.” NXP
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`denies any remaining allegations in Paragraph 8.
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`9. Because NXP maintains more than minimum contacts with this District, the Court’s
`exercise of jurisdiction aligns with constitutional standards of fair play and substantial
`justice and arises directly from NXP’s purposeful minimum contacts in this District.
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`ANSWER: Without admitting personal jurisdiction is proper here, NXP does not contest
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`personal jurisdiction for purposes of this litigation only. To the extent an answer is
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`required, NXP denies any remaining allegations in Paragraph 9.
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`10. Venue is proper in this District under 28 U.S.C. § 1400(b) because NXP has regular
`and established places of business and has committed acts of infringement in this District.
`NXP maintains two offices, including its headquarters office, in this District. NXP advertises,
`for example, that semiconductor design and manufacturing activities take place at both of
`its Austin, Texas facilities. See, e.g., https://www.nxp.com/company/about-nxp/worldwide-
`locations/united-states:USA. NXP further advertises that “NXP owns and operates four
`wafer fabrication facilities in the US, two of which are in Austin, Texas . . . ,” and that
`“representative products of
`these
`fabs
`include microcontrollers
`(MCUs) and
`microprocessors (MPUs), power management devices, RF transceivers, amplifiers, and
`sensors.” Id.
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`Case 6:22-cv-00466-ADA-DTG Document 75 Filed 05/23/23 Page 4 of 12
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`ANSWER: The allegations regarding venue in Paragraph 10 are conclusions of law,
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`rather than statements of fact, to which no response is required. Without admitting venue
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`is proper here, NXP does not contest venue for purposes of this litigation in the Western
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`District of Texas only. NXP denies that this Division is convenient, and reserves its
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`rights to move for transfer under 28 U.S.C. § 1404. NXP denies that it “committed acts
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`of infringement.” NXP denies any remaining allegations of Paragraph 10.
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`THE ASSERTED PATENTS
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`11. U.S. Patent No. 7,804,435, titled “Video decoder with reduced power consumption
`and method thereof,” issued September 28, 2010 (“’435 patent”), a true and correct copy of
`which is attached as Exhibit A. The application leading to the ’435 patent was filed August
`31, 2006.
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`ANSWER: NXP admits that United States Patent No. 7,804,435 (“the ’435 patent”)
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`states on its face that it is entitled “Video decoder with reduced power consumption and
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`method thereof,” issued on September 28, 2010, and was filed on August 31, 2006. NXP
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`denies any remaining allegations in Paragraph 11.
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`12. U.S. Patent No. 8,933,945, titled “Dividing work among multiple graphics pipelines
`using a super-tiling technique,” issued January 13, 2015 (“’945 patent”), a true and correct
`copy of which is attached as Exhibit B. The application leading to the ’945 patent was filed
`June 12, 2003, and claims priority to U.S. Provisional Appl. No. 60/429,641, filed November
`27, 2002.
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`ANSWER: NXP admits that United States Patent No. 8,933,945 (“’945 patent”) states on
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`its face that it is entitled “Dividing work among multiple graphics pipelines using a
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`super-tiling technique,” issued on January 13, 2015, was filed on June 12, 2003, and
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`claims priority to U.S. Provisional Appl. No. 60/429,641, filed November 27, 2002.
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`NXP denies any remaining allegations in Paragraph 12.
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`13. The ’435 and ’945 patents (collectively, the “Asserted Patents”) are presumed valid
`and enforceable under 35 U.S.C. § 282.
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`Case 6:22-cv-00466-ADA-DTG Document 75 Filed 05/23/23 Page 5 of 12
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`ANSWER: Paragraph 13 contains conclusions of law, rather than statements of fact, to
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`which no response is required. To the extent a response is required, NXP denies the
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`allegations in Paragraph 13.
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`14. AST owns all right, title, and interest in the Asserted Patents, including the right to
`assert all causes of action involving the asserted patents and the right to any remedies for
`infringement, including for past damages. Exhibits C and D contain true and accurate copies
`of the assignment records for the '435 and '945 patents, respectively.
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`ANSWER: NXP is without knowledge or information sufficient to form a belief as to the
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`allegations in Paragraph 14, and therefore denies the allegations in Paragraph 14.
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`COUNT I: INFRINGEMENT OF THE ’435 PATENT
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`15. AST incorporates the preceding paragraphs as if it repeated them all here.
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`ANSWER: NXP incorporates by reference the contents in the preceding Paragraphs 1-14
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`as if restated fully herein.
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`16. The ’435 patent recites 26 claims, including independent claims 1, 9, 14, 19, 22, 25,
`and 26. See Ex. A, 17:43 to 20:33.
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`ANSWER: NXP admits that the ’435 patent recites 26 claims and claims 1, 9, 14, 19, 22,
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`25, and 26 are independent claims. NXP denies any remaining allegations in Paragraph
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`16.
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`17. Claim 1 of the ’435 patent reads:
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`An apparatus comprising:
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`a power management controller operatively couplable to a video decoder that decodes
`at least one encoded digital video stream and in response to a determination of
`encoding description data that describes a scheme used to encode the input stream,
`varies power consumption of at least one operational portion of the video decoder.
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`Ex. A. 17:54-60.
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`Case 6:22-cv-00466-ADA-DTG Document 75 Filed 05/23/23 Page 6 of 12
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`ANSWER: To the extent that an answer is required, NXP admits that Paragraph 17
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`recites claim 1 of the ’435 patent. NXP denies any remaining allegations in Paragraph
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`17.
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`18. NXP has infringed and continues to infringe, literally or by the doctrine of
`equivalents, at least claims 1, 9, and 26 of the ’435 patent by making, using, selling, offering
`for sale, or importing products that infringe the ’435 patent in the United States.
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`ANSWER: NXP denies the allegations in Paragraph 18.
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`19. NXP’s products that infringe the ’435 patent include, for example, its i.MX family of
`applications processors—such as the i.MX 8 QuadMax Applications Processor—and other
`products with the same or similar features and functionality. Exhibit E contains an
`exemplary claim chart showing one way NXP infringes the ’435 patent.
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`ANSWER: NXP denies the allegations in Paragraph 19.
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`20. NXP has known about the ’435 patent at least as early as its receipt of AST’s letter of
`May 3, 2022, which notified NXP that at least its i.MX family of applications processors
`infringed at least claims 1, 9, 14, 19, 22, 25, and 26 of the ’435 patent. NXP has known about
`the ’435 patent at least as early as May 5, 2022, when AST filed its Original Complaint and
`included claim charts showing examples of how NXP infringes the '435 patent. Despite these
`repeated notices, on information and belief NXP has taken no steps to cease its infringement.
`
`ANSWER: NXP denies the allegations in Paragraph 20.
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`21. NXP has also contributed and continues to contribute to the infringement of the '435
`patent by others by providing hardware and software components, including firmware, that
`perform the methods disclosed in at least claims 9 and 26. When a user uses NXP's processors
`or products containing them, those users directly infringe at least claims 9 and 26 of the '435
`patent. NXP's hardware and software components are not staple articles of commerce, have
`no substantial non-infringing uses, and are a material part of the '435 patent's claimed
`invention.
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`ANSWER: NXP denies the allegations in Paragraph 21.
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`22. NXP is liable for infringement of the ’435 patent due to its actions in this District and
`throughout the United States. NXP’s infringing conduct has caused AST to suffer damages
`and irreparable harm.
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`ANSWER: NXP denies the allegations in Paragraph 22.
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`COUNT II: INFRINGEMENT OF THE ’945 PATENT
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`23. AST incorporates the preceding paragraphs as if it repeated them all here.
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`Case 6:22-cv-00466-ADA-DTG Document 75 Filed 05/23/23 Page 7 of 12
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`ANSWER: NXP incorporates by reference the contents in the preceding Paragraphs 1-22
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`as if restated fully herein.
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`24. The ’945 patent recites 21 claims, including independent claims 1, 18, and 21. See Ex.
`B, 9:64 to 12:38.
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`ANSWER: NXP admits that the ’945 recites 21 claims and that claims 1, 18, and 21 are
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`independent claims. NXP denies any remaining allegations in Paragraph 24.
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`25. Claim 1 of the ’945 patent reads:
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`A graphics processing circuit, comprising:
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`at least two graphics pipelines on a same chip operative to process data in a
`corresponding set of tiles of a repeating tile pattern corresponding to screen locations,
`a respective one of the at least two graphics pipelines operative to process data in a
`dedicated tile; and
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`a memory controller on the chip in communication with the at least two graphics
`pipelines, operative to transfer pixel data between each of a first pipeline and a second
`pipeline and a memory shared among the at least two graphics pipelines;
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`wherein the repeating tile pattern includes a horizontally and vertically repeating
`pattern of square regions.
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`Ex. B, 9:65 to 10:10.
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`ANSWER: To the extent that an answer is required, NXP admits that Paragraph 25
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`recites claim 1 of the ’945 patent. NXP denies any remaining allegations in Paragraph
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`25.
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`26. NXP has infringed and continues to infringe, literally or by the doctrine of
`equivalents, at least claims 1 and 21 of the ’945 patent by making, using, selling, offering for
`sale, or importing products that infringe the ’945 patent in the United States.
`
`ANSWER: NXP denies the allegations in Paragraph 26.
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`27. NXP’s products that infringe the ’945 patent include, for example, its i.MX family of
`applications processors—such as the i.MX 8 QuadMax Applications Processor—and other
`products with the same or similar features and functionality. Exhibit F contains an
`exemplary claim chart showing one way NXP infringes the ’945 patent.
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`ANSWER: NXP denies the allegations in Paragraph 27.
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`Case 6:22-cv-00466-ADA-DTG Document 75 Filed 05/23/23 Page 8 of 12
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`28. NXP has known about the ’945 patent at least as early as April 25, 2016, when AST
`issued a subpoena to non-party NXP seeking discovery of matters including NXP’s potential
`infringement of the ’945 patent in Certain Computing or Graphics Systems, Components
`Thereof, and Vehicles Containing Same, Inv. No. 337-TA-984 (U.S.I.T.C. 2016). NXP has also
`known about the ’945 patent at least as early as its receipt of AST’s letter of May 3, 2022,
`which notified NXP that at least its i.MX family of applications processors infringed at least
`claims 1, 18, and 21 of the ’945 patent. NXP has known about the '945 patent at least as early
`as May 5, 2022, when AST filed its Original Complaint and included claim charts showing
`examples of how NXP infringes the '945 patent. Despite these repeated notices, on
`information and belief NXP has taken no steps to cease its infringement.
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`ANSWER: NXP denies the allegations in Paragraph 28.
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`29. NXP is liable for infringement of the ’945 patent due to its actions in this District and
`throughout the United States. NXP’s infringing conduct has caused AST to suffer damages
`and irreparable harm.
`
`ANSWER: NXP denies the allegations in Paragraph 29.
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`RESPONSE TO AST’S PRAYER FOR RELIEF
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`NXP denies that AST is entitled to any relief from NXP , including but not limited to the
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`relief sought in Paragraphs A through G in AST’s Prayer for Relief.
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`RESPONSE TO AST’S DEMAND FOR JURY TRIAL
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`AST’s demand for a trial by jury does not require a response by NXP . To the extent that
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`a response is required, NXP admits that AST has requested a trial by jury.
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`AFFIRMATIVE DEFENSES
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`NXP incorporates by reference as if fully set forth herein its responses to Paragraphs 1–29
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`of the FAC. Without assuming any burden other than that imposed by operation of law and without
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`reducing or removing AST’s burden of proof on its affirmative claims, NXP alleges and asserts
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`the following defenses in response to the FAC and AST’s assertion that NXP infringes the Asserted
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`Patents, undertaking the burden of proof only as to those defenses deemed affirmative defenses by
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`law, regardless of how such defenses are denominated herein. In addition, NXP specifically
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`Case 6:22-cv-00466-ADA-DTG Document 75 Filed 05/23/23 Page 9 of 12
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`reserves the right to further amend its Answer to AST’s FAC to add Separate Defenses and
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`Counterclaims that become known through the course of discovery.
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`First Affirmative Defense: (Non-Infringement)
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`1.
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`NXP has not infringed, either literally or under the doctrine of equivalents, any
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`claims of the Asserted Patents; therefore, NXP is not liable for any infringement thereof.
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`Second Affirmative Defense: (Invalidity)
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`2.
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`The claims of the Asserted Patents are invalid because they fail to satisfy one or
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`more requirements of patentability under Title 35 of the United States Code.
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`Third Affirmative Defense: (Failure to State a Claim)
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`3.
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`The FAC fails to plead a plausible claim upon which relief may be granted and/or
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`fails to plead factual allegations with sufficiency and particularity required to state a plausible
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`claim.
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`Fourth Affirmative Defense: (Prosecution History Estoppel/Disclaimer)
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`4.
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`AST is estopped from construing any valid claim of the Asserted Patents to be
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`infringed literally or under the doctrine of equivalents due to admissions or statements made in
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`prior litigation and/or to the U.S. Patent and Trademark Office, including (a) during prosecution
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`of the Asserted Patents, (b) in the specifications and claims of the Asserted Patents, (c) in the
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`provisional applications from which the Asserted Patents purport to claim priority, (d) during
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`prosecution of patent applications related to the Asserted Patents, and (e) during prior proceedings
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`related to one or more of the Asserted Patents.
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`Case 6:22-cv-00466-ADA-DTG Document 75 Filed 05/23/23 Page 10 of 12
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`Fifth Affirmative Defense: (Marking and No Pre-Suit Damages)
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`5.
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`AST does not allege that it, its predecessors-in-interest, or parties that it has granted
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`a license or covenant not to sue complied with 35 U.S.C. § 287. This failure precludes any
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`recovery by AST for damages alleged to have accrued prior to the initiation of this suit.
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`Sixth Affirmative Defense: (Express or Implied License)
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`6.
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`AST’s claims of infringement of the Asserted Patents are barred, in whole or in
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`part, based on express or implied licenses.
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`Seventh Affirmative Defense: (Patent Exhaustion)
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`7.
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`AST’s claims of infringement of the Asserted Patents are barred, in whole or in
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`part, by the doctrine of patent exhaustion.
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`Eighth Affirmative Defense: (No Costs)
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`8.
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`AST failed to disclaim the claims of the Asserted Patents that are invalid before
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`commencement of suit and therefore may recover no costs.
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`Ninth Affirmative Defense: (28 U.S.C. § 1498(a))
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`9.
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`To the extent that AST may accuse products or services that are provided by or for
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`the government of the United States of America, there is no jurisdiction over such claims, pursuant
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`to 28 U.S.C. § 1498(a), outside of the U.S. Court of Federal Claims.
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`Tenth Affirmative Defense: (Statute of Limitations)
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`10.
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`AST’s claims for relief are barred at least in part by 35 U.S.C. § 286.
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`Eleventh Affirmative Defense: (Equitable Defenses)
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`11.
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`AST’s claims for relief are barred, in part or in whole, in equity, including by the
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`doctrine of equitable estoppel.
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`Twelfth Affirmative Defense: (No Injunctive Relief)
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`12.
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`AST is not entitled to injunctive relief for any of the Asserted Patents under eBay v
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`MercExchange, LLC, 126 S. Ct. 1837, 547 U.S. 388 (2006) because, inter alia, any alleged injury
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`to AST is not immediate or irreparable, AST has an adequate remedy at law, and the balance of
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`hardships does not warrant injunctive relief.
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`NXP’S PRAYER FOR RELIEF
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`NXP , reserving its right to amend its pleadings to add additional defenses, affirmative
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`defenses, and counterclaims if warranted by discovery, prays for the following relief:
`
`a.
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`A judgment that NXP has not infringed any claim of the ’435 patent nor infringed
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`any claim of the ’945 patent.
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`b.
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`c.
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`A judgment that both the ’435 patent and the ’945 patent are invalid.
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`A judgment that AST’s FAC be dismissed with prejudice, and that AST take
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`nothing by its Complaint.
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`d.
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`A judgment that 35 U.S.C. §§ 271 and 287 bar AST from recovering any pre-suit
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`damages.
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`e.
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`A judgment that this is an exceptional case pursuant to 35 U.S.C. § 285 and an
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`award to NXP USA of its reasonable attorneys’ fees and costs of suit pursuant to 35 U.S.C. §§ 284,
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`285, and all other applicable statutes, rules, and common law.
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`f.
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`An award to NXP of such other and further relief as the Court may deem just and
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`proper.
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`Case 6:22-cv-00466-ADA-DTG Document 75 Filed 05/23/23 Page 12 of 12
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`May 23, 2023
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`Respectfully submitted,
`
`
`By: /s/ Richard S. Zembek
`
`
`
`
`Richard S. Zembek (SBN 00797726)
`richard.zembek@nortonrosefulbright.com
`NORTON ROSE FULBRIGHT US LLP
`Fulbright Tower
`1301 McKinney, Suite 5100
`Houston, Texas 77010-3095
`Tel: (713) 651-5151
`Fax: (713) 651-5246
`
`Eric C. Green (SBN 24069824)
`eric.green@nortonrosefulbright.com
`Catherine Garza (SBN 24073318)
`Cat.garza@nortonrosefulbright.com
`NORTON ROSE FULBRIGHT US LLP
`98 San Jacinto Boulevard, Suite 1100
`Austin, Texas 78701
`Tel: (512) 474-5201
`Fax: (512) 536-4598
`
`Counsel for Defendant NXP USA, Inc.
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`
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that on May 23, 2023, all counsel of record who are
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`deemed to have consented to electronic service are being served with a copy of this document via
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`the Court’s CM/ECF system.
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`/s/ Catherine Garza
`
`Catherine Garza
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