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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`No. 6:22-CV-0466-ADA-DTG
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`ADVANCED SILICON
`TECHNOLOGIES LLC,
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`v.
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`NXP SEMICONDUCTORS N.V.,
`NXP B.V., and
`NXP USA, INC.,
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`
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`Plaintiff,
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`Defendants.
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`NXP USA, INC.’S UNOPPOSED MOTION FOR LEAVE TO
`AMENDED FINAL INVALIDITY CONTENTIONS
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`NXP USA, Inc. (“NXP”) respectfully requests leave to amend its Final Invalidity
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`Contentions directed to U.S. Patent No. 7,804,435 (“the ’435 patent”). NXP’s proposed
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`amendments—which Advanced Silicon Technologies LLC (“AST”) does not oppose—address
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`AST’s allegations (i) that the ’435 patent was conceived prior to its filing date and thus is entitled
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`to an effective date earlier than its filing date; and (ii) that supposed functionality in NXP’s accused
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`products related to “clock gating” or powering on or off system components infringes asserted
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`claims of the ’435 patent.
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`Subsequent to service of NXP’s Final Invalidity Contentions, AST identified documents
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`that purportedly support conception of the alleged invention in the ’435 patent prior to its filing
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`date. NXP promptly served proposed amended contentions on AST responsive to this earlier date.
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`Additionally, AST requested, and the Court granted, AST’s unopposed motion for leave to amend
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`its Final Infringement Contentions on August 4, 2023. Dkt. 80 and associated text entry. AST’s
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`First Amended Final Infringement Contentions include infringement theories relating to “clock
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`gating” and powering on or off circuit components that were not previously advanced. Pursuant
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`Case 6:22-cv-00466-ADA-DTG Document 85 Filed 09/27/23 Page 2 of 4
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`to an agreement between the parties, NXP promptly served proposed amended contentions on AST
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`that included prior art responsive to these new theories of infringement.
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`Good cause supports this motion. The amendments to NXP’s invalidity contentions are
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`directly responsive to arguments made after service of NXP’s Final Invalidity Contentions. NXP
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`has diligently provided drafts of its proposed amended contentions for AST’s review. Permitting
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`NXP to amend its contentions will not unduly prejudice AST. However, NXP’s invalidity defense
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`will be prejudiced if these amendments are not allowed. Granting this motion will not delay any
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`deadline in this litigation, and sufficient time remains in fact discovery for the parties to pursue
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`any additional discovery necessitated by these amendments. Accordingly, NXP requests that this
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`unopposed motion be granted.
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`Case 6:22-cv-00466-ADA-DTG Document 85 Filed 09/27/23 Page 3 of 4
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`September 27, 2023
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`
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`Eric C. Green
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`Respectfully submitted,
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`By:
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`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
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`COUNSEL FOR DEFENDANT NXP USA,
`INC.
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`CERTIFICATE OF CONFERENCE
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`I conferred by phone and e-mail on behalf of NXP regarding this motion with counsel for
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`AST, which indicated via email on September 21, 2023 that AST does not oppose this motion.
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`/s/ Eric C. Green
`By:
` Eric C. Green
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`Case 6:22-cv-00466-ADA-DTG Document 85 Filed 09/27/23 Page 4 of 4
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`CERTIFICATE OF SERVICE
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`I certify that on September 27, 2023, the foregoing was electronically filed with the Clerk
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`of Court using the CM/ECF system, which will send notification of such filing to all counsel of
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`record.
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`/s/ Catherine Garza
`By:
` Catherine Garza
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