HSM Portfolio LLC et al v. Fujitsu Limited et al

Filing 205

MEMORANDUM ORDER Granting 45 Motion to Dismiss; Granting in part and Denying in part 52 Motion to Dismiss; Granting 70 Motion to Dismiss; Granting 100 Motion to Dismiss; Granting 122 Motion to Dismiss; Granting in part and Denying in part [ 139]; Administratively closing with leave to renew 140 Motion to Dismiss; Granting in part and Denying in part 174 Motion to Dismiss. Plaintiff is granted Leave to Amend its complaint no later than 7/17/2012 (see Memorandum Order for further details). Signed by Judge Richard G. Andrews on 7/3/2012. (nms)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
HSM PORTFOLIO LLC, et al.,
Plaintiffs,

v.

Civil Action No. 11-770-RGA

FUJITSU LIMITED, et al.,
Defendants.

MEMORANDUM ORDER

Before the Court are various motions to dismiss for failure to state a claim. (D.I. 45, 52,
70,100,122,139,140, 174). Therearetwofilingsjoiningintheearliestofthemotions. (D.I.
53, 121). All motions seek dismissal of all claims of indirect infringement. Some ofthe motions
also seek dismissal of the claims of direct infringement. (D.I. 52, 139, 174). Two of the motions
further seek dismissal of the allegations of willfulness. (D.I. 52, 174).
The Plaintiff in its Amended Complaint 1 (D.I. 152) asserts that four patents are infringed,
all of which appear to concern logic circuits. The patents are old-- the '367 patent (issued
March 19, 1991), the '853 patent (issued July 9, 1991), the '212 patent (issued September 21,
1993), and the '949 patent (issued February 21, 1995). (D.I. 152-1, 152-2, 152-3, 152-4). The
amended complaint is 88 pages long, but the allegations, in material respects, are very similar
against all defendants.
For example, it is alleged that Toshiba directly and indirectly infringes the '367 patent
literally by making, using, selling and/or importing five identified projection televisions and a
1

Much of the briefing was done in relation to the original complaint. The parties have
stipulated that such briefing applies equally to the after-filed complaint. (D.I. 164).

"Notebook Tecra" and "other similar products" containing semiconductor devices that infringe
the patent. (D.I. 152, ~ 148). A second paragraph makes the same allegations but says the
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infringement is "equivalently."

(/d.,~

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149). There is a third paragraph that states the

semiconductor devices have "no substantial non-infringing uses" and that Toshiba has
"knowledge of the non-staple nature of the products containing these semiconductor devices and

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the '367 patent throughout the entire period of its infringing conduct or at least by December 19,
2008, when Toshiba was formally placed on notice of its infringement."

(/d.,~

150). The fourth

and last relevant paragraph says the infringement has been "willful and intentional." (/d.,

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151 ).

Toshiba joined ON Semiconductor's Motion to Dismiss Plaintiffs Indirect Infringement
Claims. (D .I. 121; see D .I. 45). The motions that seek dismissal of the direct infringement claims
are based on insufficient identification of the accused products.
The minimal allegations set forth in the counts against each of the defendants (combined
with jurisdictional allegations) are all that are required to satisfy Form 18 and to state a claim of
direct infringement. See In re Bill of Lading Transmission and Processing System Patent

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Litigation, 2012 WL 2044605, *7 (Fed. Cir. June 7, 2012) ("whether [a complaint] adequately

pleads direct infringement is to be measured by the specificity required by Form 18."). 2 Thus, to
the extent any of the motions seek to dismiss claims of direct infringement, they will be denied.
The allegations are insufficient to state a claim for indirect infringement. See generally
id. Among other things, there are no allegations of direct infringement accompanying the

allegations of indirect infringement. See id. at *5. There is no allegation that the defendant

2

The Federal Circuit further comments, "It will not always be true that a complaint which
contains just enough information to satisfy a governing form will be sufficient under
Twombly ...." !d. at *7 n.6. Given the citations that follow in the footnote, I do not believe this is
meant to be some sort of limitation on the holding in the text.

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knew about the existence of the patent-in-suit. See Global-Tech Appliances, Inc. v. SEE S.A.,
131 S.Ct. 2060,2068 (2011). To the extent the allegations can be read to allege that the
defendant knew that the acts it induced or contributed to constituted patent infringement, see id.
at 2068-70, they are wholly unsupported by any factual allegations. Stating that the defendant
was on notice of a patent as of a certain date is insufficient to provide a factual basis for alleging
knowledge.
I believe, under the authority of Ashcroft v. Iqbal, 556 U.S. 662 (2009), and Fowler v.
UPMC Shadyside, 578 F.3d 203 (3d Cir. 2009), that the claim of"willfulness" may be alleged

generally, but that there must be facts alleged that "are sufficient to show that the plaintiff has a
'plausible claim for relief."' See id. at 210-11. Whether the facts are sufficient is a '"contextspecific task that requires the reviewing court to draw on its judicial experience and common
sense."' I d.
The factual support for the allegations of willfulness made in connection with the patentsin-suit are insufficient. There are none.
Thus, IT IS HEREBY ORDERED

reP
this~ July 2012, that:

1. As to ON Semiconductor, the Motion to Dismiss (D.I. 45) is GRANTED. The claims
of indirect infringement are DISMISSED WITHOUT PREJUDICE. As Advanced Micro and
Toshiba joined in this motion (D.I. 53, 121), the claims of indirect infringement asserted against
them are also DISMISSED WITHOUT PREJUDICE.
2. As to Zoran, the Motion to Dismiss (D.I. 52) is GRANTED IN PART AND DENIED
IN PART. The claims of indirect infringement and willfulness are DISMISSED WITHOUT
PREJUDICE. The claim of direct infringement remains.

3. As to Micron Technology, the Motion to Dismiss (D.I. 70) is GRANTED. The claims

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of indirect infringement are DISMISSED WITHOUT PREJUDICE.
4. As to SanDisk, the Motion to Dismiss (D.I. 100) is GRANTED. The claims of
indirect infringement are DISMISSED WITHOUT PREJUDICE.
5. As to Fujitsu, the Motion to Dismiss (D.I. 122) is GRANTED. The claims of
indirect infringement are DISMISSED WITHOUT PREJUDICE.
6. As to Sony, the Motion to Dismiss (D.I. 139) is GRANTED IN PART AND
DENIED IN PART. The claims of indirect infringement are DISMISSED WITHOUT
PREJUDICE. The claims of direct infringement remain.

7. As to Elpida, the Motion to Dismiss (D.I. 140) is ADMINISTRATIVELY
CLOSED. The case against Elpida is stayed because ofElpida's bankruptcy filing. (D.I. 198).

When the stay is lifted, Elpida may renew the Motion to Dismiss.
8. As to Marvell Semiconductor, the Motion to Dismiss (D.I. 174) is GRANTED IN
PART AND DENIED IN PART. The claims of indirect infringement and willfulness are
DISMISSED WITHOUT PREJUDICE. The claim of direct infringement remains.

9. The Plaintiff is granted LEAVE TO AMEND its complaint no later than July 17,
2012.