`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`No. 6:22-CV-0466-ADA-DTG
`
`ADVANCED SILICON
`TECHNOLOGIES LLC,
`
`
`
`v.
`
`NXP SEMICONDUCTORS N.V.,
`NXP B.V., and
`NXP USA, INC.,
`
`
`
`Plaintiff,
`
`Defendants.
`
`NXP USA, INC.’S UNOPPOSED MOTION FOR LEAVE TO
`AMENDED FINAL INVALIDITY CONTENTIONS
`
`NXP USA, Inc. (“NXP”) respectfully requests leave to amend its Final Invalidity
`
`Contentions directed to U.S. Patent No. 7,804,435 (“the ’435 patent”). NXP’s proposed
`
`amendments—which Advanced Silicon Technologies LLC (“AST”) does not oppose—address
`
`AST’s allegations (i) that the ’435 patent was conceived prior to its filing date and thus is entitled
`
`to an effective date earlier than its filing date; and (ii) that supposed functionality in NXP’s accused
`
`products related to “clock gating” or powering on or off system components infringes asserted
`
`claims of the ’435 patent.
`
`Subsequent to service of NXP’s Final Invalidity Contentions, AST identified documents
`
`that purportedly support conception of the alleged invention in the ’435 patent prior to its filing
`
`date. NXP promptly served proposed amended contentions on AST responsive to this earlier date.
`
`Additionally, AST requested, and the Court granted, AST’s unopposed motion for leave to amend
`
`its Final Infringement Contentions on August 4, 2023. Dkt. 80 and associated text entry. AST’s
`
`First Amended Final Infringement Contentions include infringement theories relating to “clock
`
`gating” and powering on or off circuit components that were not previously advanced. Pursuant
`
`
`
`- 1 -
`
`
`
`Case 6:22-cv-00466-ADA-DTG Document 85 Filed 09/27/23 Page 2 of 4
`
`
`to an agreement between the parties, NXP promptly served proposed amended contentions on AST
`
`that included prior art responsive to these new theories of infringement.
`
`Good cause supports this motion. The amendments to NXP’s invalidity contentions are
`
`directly responsive to arguments made after service of NXP’s Final Invalidity Contentions. NXP
`
`has diligently provided drafts of its proposed amended contentions for AST’s review. Permitting
`
`NXP to amend its contentions will not unduly prejudice AST. However, NXP’s invalidity defense
`
`will be prejudiced if these amendments are not allowed. Granting this motion will not delay any
`
`deadline in this litigation, and sufficient time remains in fact discovery for the parties to pursue
`
`any additional discovery necessitated by these amendments. Accordingly, NXP requests that this
`
`unopposed motion be granted.
`
`
`
`
`
`- 2 -
`
`
`
`Case 6:22-cv-00466-ADA-DTG Document 85 Filed 09/27/23 Page 3 of 4
`
`
`September 27, 2023
`
`
`
`Eric C. Green
`
`
`
`Respectfully submitted,
`
`
`By:
`
`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.
`
`
`
`CERTIFICATE OF CONFERENCE
`
`I conferred by phone and e-mail on behalf of NXP regarding this motion with counsel for
`
`AST, which indicated via email on September 21, 2023 that AST does not oppose this motion.
`
`/s/ Eric C. Green
`By:
` Eric C. Green
`
`
`
`
`
`
`
`- 3 -
`
`
`
`Case 6:22-cv-00466-ADA-DTG Document 85 Filed 09/27/23 Page 4 of 4
`
`
`CERTIFICATE OF SERVICE
`
`I certify that on September 27, 2023, the foregoing was electronically filed with the Clerk
`
`of Court using the CM/ECF system, which will send notification of such filing to all counsel of
`
`record.
`
`
`
`
`
`/s/ Catherine Garza
`By:
` Catherine Garza
`
`
`
`- 4 -
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
