United States District Court, D. Delaware
Michael P. Kelly and Daniel P. Silver, MCCARTER ENGLISH LLP,
Wilmington, DE; Craig Kaufman, Thomas Gray, Kai Tseng, Jerry
Chen, and Kevin Jones, TECHKNOWLEDGE LAW GROUP LLP, Redwood
Shores, CA, attorneys for Plaintiff.
W. Poff and Pilar G. Kraman, YOUNG CONAWAY STARGATT &
TAYLOR, LLP, Wilmington, DE; Matthew M. Wolf, Ali R.
Sharifahmadian, and Jin-Suk Park, ARNOLD & PORTER KAYE
SCHOLER LLP, Washington, DC, attorneys for Defendants.
ANDREWS, U.S. DISTRICT JUDGE
before the Court is Defendants' Motion to Dismiss for
Failure to State a Claim. (D.I. 9). The issues are fully
briefed. (D.I. 10, 13, 15). For the reasons stated below, the
Court will grant Defendants' motion to dismiss.
Promos Technologies filed this suit on February 23, 2018
against Defendants Samsung Electronics Company, Samsung
Electronics America, Samsung Semiconductor, and Samsung
Austin Semiconductor (collectively "Defendants").
(D.I. 1). Plaintiffs Complaint asserts U.S. Patent Nos. 6,
163, 492 ("the '492 patent"), 6, 469, 559
("the '559 patent"), 6, 597, 201 ("the
'201 patent"), 5, 934, 974 ("the '974
patent"), and 6, 099, 386 ("the '386
patent"). Defendants filed a motion to dismiss
Plaintiffs Complaint for failure to state a claim under
Federal Rule of Civil Procedure 12(b)(6). (D.I. 9).
asserted patents are directed to different technologies. The
'492 patent relates to programmable latches that enable
modification of circuits without changing the masks used for
circuit fabrication. ('492 patent col. 1:19-21). The
'559 patent relates to systems and methods for
eliminating pulse width variations in digital delay lines in
integrated circuit devices. ('559 patent col. 1:25-33).
The '201 patent relates to dynamic precoder circuitry.
('201 patent col. 1:13-16). The '974 patent and the
'386 patent relate to chemical mechanical polishing.
('974 patent col. 1:7-9; '386 patent col. 1:8-10).
Plaintiff alleges that Defendants directly infringed the
'492 patent, the '599 patent, and the '201 patent
through their manufacture and sale of Samsung DRAM products,
specifically identifying the K4B2G0846D-HCH9 2 Gb DDR3 SDRAM.
(D.I. 1 ¶¶ 23-24, 37-38, 49-50). Plaintiff further
alleges that Defendants indirectly infringed the '492
patent, the '559 patent, and the '201 patent by both
contributory infringement and induced infringement.
(Id. ¶¶ 32-35, 44-47, 56-59). Plaintiff
also alleges that Defendants directly infringed the '974
and '386 patents under § 271(a) by using a CMP tool
in manufacturing Samsung semiconductor devices. (Id.
¶¶ 61, 70). Finally, Plaintiff alleges that
Defendants directly infringed the '974 patent under
§ 271(g) by importing semiconductor devices made by a
process practicing all the limitations of one or more claims
of the '974 patent. (Id. ¶ 62).
reviewing a motion to dismiss pursuant to Federal Rule of
Civil Procedure 12(b)(6), the Court must accept the
complaint's factual allegations as true. See Bell
Atl. Corp. v. Twombly, 550 U.S. 544, 555-56 (2007). Rule
8(a) requires "a short and plain statement of the claim
showing that the pleader is entitled to relief."
Id. at 555. The factual allegations do not have to
be detailed, but they must provide more than labels,
conclusions, or a "formulaic recitation" of the
claim elements. Id. ("Factual allegations must
be enough to raise a right to relief above the speculative
level... on the assumption that all the allegations in the
complaint are true (even if doubtful in fact).").
Moreover, there must be sufficient factual matter to state a
facially plausible claim to relief. Ashcroft v.
Iqbal, 556 U.S. 662, 678 (2009). The facial plausibility
standard is satisfied when the complaint's factual
content "allows the court to draw the reasonable
inference that the defendant is liable for the misconduct
alleged." Id. ("Where a complaint pleads
facts that are merely consistent with a defendant's
liability, it stops short of the line between possibility and
plausibility of entitlement to relief." (internal
quotation marks omitted)).
sufficiently plead direct infringement, a plaintiff must
allege sufficient facts to show a reasonable inference that
the defendant "without authority makes, uses, offers to
sell, or sells any patented invention, within the United
States or imports into the United States any patented
invention during the term of the patent therefor." 35
U.S.C. § 271(a). There are two types of indirect
infringement: induced infringement and contributory
infringement. 35 U.S.C. § 271(b) & (c). To
sufficiently plead induced infringement, a plaintiff must
allege facts "plausibly showing that [the alleged
infringer] specifically intended [a third party] to infringe
[the patent-in-suit] and knew that the [third party's]
acts constituted infringement." In re Bill of
Lading, 681 F.3d 1323, 1339 (Fed. Cir. 2012). To plead
contributory infringement, a plaintiff must allege facts
plausibly showing that a defendant "offers to sell or
sells within the United States or imports into the United
States a component of a patented machine . . . especially
made or especially adapted for use in an infringement of such
patent, and not. . . suitable for substantial noninfringing
use." 35 U.S.C. § 271(c).
Whether Pleading Infringement of "at Least" One
Claim Satisfies Rule 12(b)(6)
assert that Plaintiffs Complaint is deficient because it
pleads infringement of "at least" the explicitly
named claims of the patents-in-suit but leaves open the
possibility that other claims could also be infringed. (D.I.
10 at 17). Defendants argue that open-ended pleading is not
permitted under Rule 12(b)(6) because (1) there are no
allegations that the named claims are representative of the
unnamed claims, (2) it deprives Defendants of notice of
infringement, and (3) case management is not an acceptable
substitute for appropriate pleading under Rule 12(b)(6).
(Id. at 12-13, 18; D.I. 15 at 8). Plaintiff responds
that open-ended pleading by identifying representative claims
has been widely accepted under the Twombly and
Iqbal standards for pleading. (D.I. 13 at
Twombly and Iqbal, the use of exemplary
pleading of claims is sufficient to satisfy Rule 12(b)(6).
This issue has been addressed by at least one court in this
district. In Philips v. ASUSTeK Comput. Inc., the
court held that providing "specific details of at least
one of the method and device claims allegedly infringed under
each patent-in-suit" was sufficient to satisfy the
pleading requirements ...