United States District Court, D. Delaware
REPORT AND RECOMMENDATION
R. FALLON, UNITED STATES MAGISTRATE JUDGE
before the court in this patent infringement action is
plaintiff Godo Kaisha IP Bridge 1's ("IP
Bridge") motion to dismiss the counterclaims of
defendants TCT Mobile (US), Inc. and TCT Mobile, Inc. (D.I.
74) For the following reasons, I recommend that the court
grant the motion to dismiss without prejudice, and afford TCT
the opportunity to amend its counterclaims.
Bridge filed this action on July 24, 2015 against TCL
Communication Technology Holdings Limited ("TCL
Holdings"), TCT Mobile Limited ("TCT Mobile"),
and TCT Mobile (US), Inc. (collectively, together with TCT
Mobile, Inc., "defendants"), asserting causes of
action for the alleged infringement of three of its patents
owned by assignment. (D.I. 1) The patents-in-suit are directed
to technology declared essential to the global 2G, 3G, and 4G
telecommunications standards established by the European
Telecommunications Standards Institute ("ETSI").
(D.I. 68 at 9, ¶ 4) On December 11, 2015, TCT Mobile
(US), Inc. answered the complaint (D.I. 16), and TCT Mobile
and TCL Holdings filed a motion to dismiss for lack of
personal jurisdiction pursuant to Rule 12(b)(2) (D.I. 17).
While the motion to dismiss for lack of personal jurisdiction
was pending, IP Bridge filed an amended complaint on July 14,
2016, adding TCT Mobile, Inc. as a defendant. (D.I. 63) The
parties stipulated that this amendment would have no bearing
on the substance of the Rule 12(b)(2) motion to dismiss.
(D.I. 62) The amended complaint alleges that defendants
infringed the patents-in-suit by designing, manufacturing,
using, marketing, importing, offering for sale, and selling
mobile phones and tablets under the brands "Alcatel
OneTouch" and "TCL" (the "Accused
Products"). (D.I. 63 at ¶ 7) TCT Mobile (US), Inc.
and TCT Mobile, Inc. filed an answer to the amended complaint
on August 3, 2016, adding counterclaims for breach of
contract, violations of the Sherman Act, and patent misuse.
August 17, 2016, this court issued a Report and
Recommendation, which recommended denial of the motion to
dismiss. (D.I. 72) The court entered a Memorandum Order
adopting the Report and Recommendation on September 29, 2016.
(D.I. 103) IP Bridge filed the instant motion to dismiss the
counterclaims asserted by TCT Mobile (US), Inc. and TCT
Mobile, Inc. (together, "TCT") on August 22, 2016.
Bridge's predecessor-in-interest, Panasonic Corporation
("Panasonic"), committed to licensing the
patents-in-suit on "fair, reasonable and
non-discriminatory terms" ("FRAND") as
essential patents to the global 2G, 3G, and 4G cellular
telecommunications standards. (D.I. 68 at ¶ 4) Panasonic
made this commitment to ETSI in return for inclusion of the
patents on ETSI's roster of "standard essential
patents" ("SEPs"). (Id. at
to filing the original complaint, IP Bridge attempted to
engage in licensing negotiations with TCL Holdings. (D.I. 63
at ¶¶ 18-26) According to IP Bridge, defendants
failed to respond to IP Bridge's repeated attempts to
license its patent portfolio on FRAND terms. (Id.)
TCT contends that Panasonic's contractual commitments
with ETSI to license the technology on FRAND terms were
binding on IP Bridge as successor-in-interest. (D.I. 68 at
¶¶ 19-20) TCT pleads that IP Bridge has breached
its obligations by attempting to license its entire patent
portfolio for more than a FRAND royalty. (Id. at
Rule of Civil Procedure 12(b)(1) authorizes dismissal of a
complaint for lack of jurisdiction over the subject matter,
or if the plaintiff lacks standing to bring its claim.
Motions brought under Rule 12(b)(1) may present either a
facial or factual challenge to the court's subject matter
jurisdiction. See Lincoln Ben. Life Co. v. AEI Life,
LLC, 800 F.3d 99, 105 (3d Cir. 2015) (quoting Common
Cause of Pa. v. Pennsylvania, 558 F.3d 249, 257 (3d Cir.
2009)). In reviewing a facial challenge under Rule 12(b)(1),
the standards relevant to Rule 12(b)(6) apply. In this
regard, the court must accept all factual allegations in the
complaint as true, and the court may only consider the
complaint and documents referenced in or attached to the
complaint. See Church of Universal Bhd. v.
Farmington Twp. Supervisors, 296 F.App'x 285, 288
(3d Cir. 2008); Gould Elec, Inc. v. United States,
220 F.3d 169, 176 (3d Cir. 2000). In reviewing a factual
challenge to the court's subject matter jurisdiction, the
court is not confined to the allegations in the complaint.
See Mortensen v. First Fed. Sav. & Loan Ass
'n, 549 F.2d 884, 891 (3d Cir. 1977). Instead, the
court may consider evidence outside the pleadings, including
affidavits, depositions and testimony, to resolve any factual
issues bearing on jurisdiction. See Gotha v. United
States, 115 F.3d 176, 179 (3d Cir. 1997). Once the
court's subject matter jurisdiction over a complaint is
challenged, the plaintiff bears the burden of proving that
jurisdiction exists. See Lincoln, 800 F.3d at 105;
Mortensen, 549 F.2d at 891.
12(b)(6) permits a party to move to dismiss a complaint for
failure to state a claim upon which relief can be granted.
Fed.R.Civ.P. 12(b)(6). When considering a Rule 12(b)(6)
motion to dismiss, the court must accept as true all factual
allegations in the complaint and view them in the light most
favorable to the plaintiff. Umland v. Planco Fin.
Servs., 542 F.3d 59, 64 (3d Cir. 2008). "[C]ourts
use the same standard in ruling on a motion to dismiss a
counterclaim under Rule 12(b)(6) as they do in assessing a
claim in a complaint." Identix Pharms., Inc. v.
Gilead Sciences, Inc., C.A. No. 13-1987-LPS-CJB, 2014 WL
4222902, at *5 (D. Del. Aug. 25, 2014) (citing Tyco Fire
Prods. LP v. Victaulic Co., 777 F.Supp.2d 893, 898-99
(E.D. Pa. 2011)).
state a claim upon which relief can be granted pursuant to
Rule 12(b)(6), a complaint must contain a "short and
plain statement of the claim showing that the pleader is
entitled to relief." Fed.R.Civ.P. 8(a)(2). Although
detailed factual allegations are not required, the complaint
must set forth sufficient factual matter, accepted as true,
to "state a claim to relief that is plausible on its
face." Bell Atl. Corp. v. Twombly, 550 U.S.
544, 570 (2007); see also Ashcroft v. Iqbal, 556
U.S. 662, 663 (2009). A claim is facially plausible when the
factual allegations allow the court to ...