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Home Semiconductor Corp. v. Samsung Electronics Co. Ltd.

United States District Court, D. Delaware

May 16, 2019





         Presently before the court in this patent infringement action is a motion for leave to amend the complaint pursuant to Federal Rules of Civil Procedure 15(a)(2) and 16(b)(4) filed by plaintiff Home Semiconductor Corporation ("HSC"). (D.I. 108) For the reasons that follow, HSC's motion to amend is GRANTED.[1]


         On December 16, 2013, plaintiff HSC originally filed this patent infringement action against defendants Samsung Electronics Co., Ltd. ("SEC"), Samsung Electronics America, Inc. ("SEA"), Samsung Telecommunications America, LLC ("STA"), and Samsung Semiconductor, Inc. ("SSI") (collectively "Samsung"), alleging infringement of United States Patent Numbers 5, 452, 261 ("the '261 patent"), 6, 030, 893 ("the '893 patent"), 6, 146, 997 ("the '997 patent"), and 6, 150, 244 ("the '244 patent") (collectively, the "patents-in-suit"). (D.I. 1 at ¶¶ 2-5, 17-21) The '997 patent relates to methods of manufacturing semiconductor devices. (D.I. 1, Ex. C; D.I. 126 at 8) HSC is the owner by assignment of the patents-in-suit, and alleges that Samsung's dynamic random-access memories ("DRAMs"), NAND flash memories, and processors are infringing products. (D.I. 21 at ¶¶ 20-23, 29-41) Specifically, HSC alleges that eleven separate categories of semiconductors were made using methods that allegedly infringe the '997 patent. (D.I. 110, Ex. 3 at 15-23) A scheduling order was entered on May 12, 2014, which set the deadline to amend pleadings as October 7, 2014. (D.I. 17 at 3)

         On May 14, 2014, HSC filed its First Amended Complaint ("FAC"), which added Samsung Austin Semiconductor, LLC ("SAS") as a defendant. (D.I. 21) On May 23, 2014, HSC served discovery, seeking specific information, including the identification of entities which made the accused chips in the United States, the supply and distribution chain, and the total units manufactured in the United States. (D.I. 26; D.I. 110, Ex. 1) On June 25, 2014, Samsung responded to HSC's written discovery, and stated that "SAS has made and makes chipsets or semiconductor products and/or components for chipsets or semiconductor products in the United States." (D.I. 33; D.I. 110, Ex. 5 at 9)

         On December 17, 2014, Samsung filed petitions for inter partes review ("IPR") of the '893 patent, the '997 patent, and the '244 patent before the Patent Trial and Appeal Board ("PTAB") of the United States Patent and Trademark Office ("USPTO"). (D.I. 55) The present case was stayed and administratively closed pending the IPRs. (Id.; D.I. 56) The asserted claims of the '893 patent, the asserted claims of the '244 patent, and claims 1 and 3-8 of the '997 patent were found unpatentable at the conclusion of the IPRs. (D.I. 66) The stay was lifted on November 9, 2017, and on November 28, 2017, a supplemental scheduling order was entered. (D.I. 67; D.I. 70) Following the lifting of the stay, HSC requested supplementation of Samsung's document production and written discovery responses. (D.I. 87; D.I. 89; D.I. 110, Ex. 8; Ex. 9)

         On June 11, 2018, HSC dismissed defendant STA, because it had merged into SEA. (D.I. 79; D.I. 80) On June 12, 2018, HSC dismissed its claims with respect to the '893 patent and the '244 patent.[2] (D.I. 81; D.I. 82) HSC and Samsung engaged in a meet and confer on October 3, 2018 regarding Samsung's objections and responses to HSC's second set of requests for production. (D.I. 119, Ex. J) On October 8, 2018, HSC sent Samsung a letter reiterating, from the meet and confer, its intention to move to amend the FAC to include allegations of direct infringement under 35 U.S.C. § 271(g). (Id.)

         On November 1, 2018, Samsung informed HSC that in preparing a response to HSC's requests, it noted that the majority of additional documents requested pertained to products Samsung did not make in the United States. (D.I. 110, Ex. 11) On November 13, 2018, Samsung confirmed that it had not manufactured "DRAM, external flash memories, internal flash memories, solid state drives, multichip packages, mobile security chips, Smarcard IC for finance, security and ID/ePassports ("FSIDs"), Power ICs, and Near Field Communication Chips" in the United States since 2007. (Id., Ex. 12) On December 28, 2018, HSC filed the present motion for leave to amend the FAC to add a claim of infringement of the '997 patent under 35 U.S.C. § 271(g).[3] (D.I. 108; D.I. 109)

         A Markman hearing was held on February 14, 2019, [4] and the parties have stipulated to extend the fact discovery deadline to May 31, 2019. (D.I. 105; D.I. 107; D.I. 161; D.I. 164) Trial is scheduled for March 2, 2020. (D.I. 164)


         Rule 15(a)(2) of the Federal Rules of Civil Procedure provides that after a responsive pleading has been filed, a party may amend its pleading "only with the opposing party's written consent or the court's leave," and "[t]he court should freely give leave when justice so requires." Fed.R.Civ.P. 15(a)(2). The decision to grant or deny leave to amend lies within the discretion of the court. See Foman v. Davis, 371 U.S. 178, 182 (1962); In re Burlington Coat Factory Sees. Litig., 114 F.3d 1410, 1434 (3d Cir. 1997). The Third Circuit has adopted a liberal approach to the amendment of pleadings. See Dole v. Arco, 921 F.2d 484, 487 (3d Cir. 1990). In the absence of undue delay, bad faith, or dilatory motives on the part of the moving party, the amendment should be freely granted, unless it is futile or unfairly prejudicial to the non-moving party. See Foman, 371 U.S. at 182; In re Burlington, 114 F.3d at 1434.

         If a party seeks leave to amend after a deadline imposed by the scheduling order, the court must apply Rule 16 of the Federal Rules of Civil Procedure. See WebXchange Inc. v. Dell Inc., C.A. No. 08-132-JJF, 2010 WL 256547, at *2 (D. Del. Jan. 20, 2010). A court-ordered schedule "may be modified only for good cause and with the judge's consent." Fed.R.Civ.P. 16(b)(4). "The good cause element requires the movant to demonstrate that, despite diligence, the proposed claims could not have been reasonably sought in a timely manner." Venetec Int'l v. Nexus Med., 541 F.Supp.2d 612, 618 (D. Del. 2010). The focus of the "good cause" inquiry is, therefore, on diligence of the moving party, rather than on prejudice, futility, bad faith, or any of the other Rule 15 factors. See Glaxosmithkline LLC v. GlenmarkPharms. Inc., C.A. No. 14-877-LPS-CJB, 2016 WL 7319670, at *1 (D. Del. Dec. 15, 2016). Only after having found the requisite showing of good cause will the court consider whether the proposed amended pleading meets the 15(a) standard. See E. Minerals & Chems. Co. v. Mahan, 225 F.3d 330, 340 (3d Cir. 2000). The Federal Circuit reviews the district court's ruling on a motion to amend pleadings under the law of the regional circuit. See Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d 1324, 1333 (Fed. Cir. 2012).


         a. ...

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