ProMOS Technologies, Inc. v. Samsung Electronics Co., Ltd. et al
Filing
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MEMORANDUM OPINION. Signed by Judge Richard G. Andrews on 10/31/2018. (nms)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
PROMOS TECHNOLOGIES, INC.,
Plaintiff,
V.
SAMSUNG ELECTRONICS CO. LTD.,
SAMSUNG ELECTRONICS AMERICA,
INC. , SAMSUNG SEMICONDUCTOR,
INC. , AND SAMSUNG AUSTIN
SEMICONDUCTOR, LLC,
Civil Action No. 18-307-RGA
Defendants.
MEMORANDUM OPINION
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.
Adam 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.
October
J{ ,2018
Pending 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.
I.
BACKGROUND
Plaintiff 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).
The 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 1123-24, 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
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infringement. (Id.
,r,r 32-35, 44-4 7, 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.
,r,r 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.
II.
,r 62).
LEGALSTANDARD
When 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 At!. 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)).
To 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
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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-insuit] 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).
III.
DISCUSSION
A. Whether Pleading Infringement of "at Least" One Claim Satisfies Rule 12(b)(6)
Defendants 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 15-16).
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The Court declines to consider Plaintiffs citations to the Sedona Conference Guidelines because they are not a
summary of law, but of proposed best practices.
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Under 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 under Rule 12(b)(6). 2016 WL 6246763, at *4 (D. Del. Oct. 25,
2016). As the court in Philips discussed,
This District's [Default Standards] provide that '[w]ithin 30 days after the Rule 16
Conference and for each defendant, the plaintiff shall specifically identify the
accused products and the asserted patent(s) they allegedly infringe, and produce
the file history for each asserted patent.' These [Standards] were promulgated
post Twombly/Iqbal and are consistent with the Federal Rules of Civil
Procedure's and courts' concern that a complaint 'give[s] the defendant fair notice
of what the . .. claim is and the grounds upon which it rests.
Id. at *3 (quoting D. Del. Default Std. § 4.a; Twombly, 550 U.S. at 555) (citing Iqbal, 556 U.S. at
698). Here, Plaintiff does provide details of at least one claim allegedly infringed under each
asserted patent. Therefore, Plaintiffs identification of infringed claims is sufficient under Rule
12(b)(6). 2
B. Whether Pleading a Single Exemplary Infringing Product Satisfies Rule 12(b)(6)
Defendants argue that Plaintiffs Complaint is deficient because it identifies a broad
category of Defendants' products (Samsung DRAM) as infringing, but only identifies a single
exemplary infringing product. (D.I. 10 at 15-16). Defendants assert that identifying a single
exemplary product does not provide sufficient notice of which products are actually accused of
infringing. (Id. at 16). Plaintiff responds that identifying an exemplary product satisfies
Twombly and Iqbal if the Complaint also sufficiently identifies what in the exemplary product
infringes the claim limitations. (D.I. 13 at 12-13). Plaintiff asserts that the description of the
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I have previously ruled similarly. E.g. , SIPCO, LLC v. Streetline, Inc., 230 F. Supp. 3d 351 (D. Del. 2017).
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infringing instrumentality gives Defendants sufficient notice that other products containing the
same instrumentality also infringe the asserted patent, even if those other products are not
specifically named. (Id. at 13). Defendants assert that Plaintiff must plead facts showing that
other Samsung DRAM products are the same or similar to the identified exemplary product.
(D .I. 10 at 16).
Under Twombly and Iqbal, pleading an exemplary product is sufficient to satisfy Rule
12(b)(6). This issue has been addressed by at least one court in this district. In Philips, the court
held that providing "specific examples of at least one product [the defendant] manufactures or
sells that contains mechanisms or processes performing the identified functions, and specific
examples of the class of products which also contain" the identified functions was sufficient to
satisfy the pleading requirements under Rule 12(b)(6). 2016 WL 6246763, at *4. As stated
above, this District' s Default Standards were promulgated post Twombly/Iqbal and are consistent
with the Federal Rules of Civil Procedure. Here, Plaintiff does provide details of at least one
product allegedly infringing each asserted patent. The identified product is a specific example of
the class of products (Samsung DRAM) which Plaintiff alleges also contain the identified
functions . Moreover, while Plaintiff fails to name a specific product that infringes the method
claims of the ' 974 patent and the device claims of the ' 386 patent, identifying only a "CMP
tool," it is possible for a Complaint to provide sufficient details for Defendants to identify the
accused CMP tool. (D.I. 1 1164-67, 72-75). Therefore, Plaintiffs identification of infringing
products and methods is sufficient under Rule 12(b)(6).
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C. Whether Plaintiff's Complaint Sufficiently Identifies Entities Responsible for
Infringement
Defendants argue that Plaintiffs Complaint is deficient because all allegations of
infringement are made against a collective "Samsung" without identifying which individual
Defendant is responsible for specific acts of infringement. (D.I. 10 at 13). Regarding direct
infringement, Defendants assert that Plaintiff must identify "which particular defendant or
defendants are responsible for which allegedly infringing products, processes, or methods." (D.I.
10 at 13) (citing M2M Solutions LLC v. Telit Commc 'ns PLC, 2015 WL 4640400, at *3 (D. Del.
Aug. 5, 2015)). Defendants also argue that Plaintiffs allegations of indirect infringement are
deficient because the Complaint fails to distinguish between Defendants, making it impossible to
tell which Defendant is responsible for which action. (D.I. 10 at 21 ). Plaintiff argues that it is
sufficient under Rule 12(b)( 6) to allege infringing activity independently against each Defendant
in the section of the Complaint addressing jurisdiction and venue. (D.I. 13 at 11 ). Defendants
respond that Plaintiffs jurisdictional pleading cannot support claims of infringement against the
individual Defendants because it solely alleges a stream of commerce theory of infringement.
(D.I. 111 8-15).
Rule 12(b)(6) requires a complaint alleging infringement against multiple defendants to
"adequately identif[y] specific infringing acts" of each defendant. Mayne Pharma Int '! PTY Ltd.
v. Merck & Co. , 2015 WL 7833206, at *3-*4 (D. Del. Dec. 3, 2015); North Star Innovations,
Inc. v. Toshiba Corp. , 2016 WL 7107230, at *2 (D. Del. Dec. 6, 2016). Plaintiff is correct that a
Complaint may be structured to refer to all named defendants collectively within a Count. To do
so, a Count must incorporate previous allegations of the Complaint identifying the specific
infringing acts of the individual defendants. Mayne, 2015 WL 7833206, at *3 . As in Mayne, the
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Counts referring to Defendants collectively as "Samsung" each re-allege all preceding
paragraphs of the Complaint. (D.I. 1 ,r,r 22, 36, 48, 60, 69). However, unlike in Mayne, the
preceding paragraphs do not identify any Defendant' s infringing acts. Plaintiffs jurisdictional
allegations state that each entity "placed one or more of its infringing products into the stream of
commerce" and "ships infringing products into and within this District through an established
distribution channel." (Id.
,r 9 (Samsung Electronics Co.), ,r 11 (Samsung Electronics America),
,r 13 (Samsung Semiconductor, Inc.), and ,r 15 (Samsung Austin Semiconductor)).
This is
insufficient to allege infringement under 35 U.S.C. § 271(a) or§ 271(g) as it provides no factual
assertion about whether any Defendant makes, uses, offers to sell, or sells the infringing products
within the United States, or imports them into the United States. Neither does Plaintiffs
jurisdictional pleading aid in establishing which Defendant took which infringing action to make
a plausible claim of either induced infringement or contributory infringement under § 271 (b)-( c).
Thus, Plaintiffs identification of the entities responsible for the infringing acts is insufficient
under Rule 12(b)(6).
D. Whether Plaintiff has Pled Sufficient Facts Under Rule 12(b)(6) to Support its
Claims
i. Direct Infringement
Defendants assert that Plaintiffs Complaint fails to plead sufficient facts to support a
cause of action for direct infringement of the identified claims. (D.I. 10. at 10). Specifically,
Defendants argue that Plaintiffs factual allegations are deficient because they "parrot" the claim
language of the patents-in-suit. (Id.). The only description of the circuit in the infringing
product is drawn from the claim language; there are no alleged facts stating what the accused
products contain that meets the claim limitations. (Id. at 11-12). Plaintiff asserts that it has
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alleged sufficient additional factual information to go beyond "parroting" the claim language.
(D.I. 13 at 8-9). Moreover, Plaintiff argues that a complaint is only required to plead enough
facts to give Defendants fair notice of the claims and the grounds upon which the claims are
based. (D.I. 13 at 10-11).
This Complaint presents two questions: whether the Plaintiff has pled sufficient facts as
to (1) the identified K4B2G0846D-HCH9 2 Gb DDR3 SDRAM and (2) the broader product
class of Samsung DRAM products. The Federal Circuit in Disc Disease Solutions Inc. v. VGH
Solutions, Inc. stated that the identification of three specific accused products and allegations that
each accused product met "each and every element of at least one claim of the [] Patent" were
"enough to provide [the defendant] fair notice of infringement of the asserted patents." 888 F.3d
1256, 1260 (Fed. Cir. 2018). Here, Plaintiff has specifically identified K4B2G0846D-HCH9 2
Gb DDR3 SD RAM as the infringing product and alleges that it practices each limitation of at
least one claim in the ' 492, '559 and '201 patents. (D.I. 1 at ,i,i 24, 28, 50). Therefore, Plaintiff
has sufficiently pled a claim of patent infringement for the K4B2G0846D-HCH9 2 Gb DDR3
SDRAM.
However, Plaintiffs reliance on Disc Disease Solutions Inc. v. VGH Solutions, Inc. to
support its pleadings for the broad class of unidentified Samsung DRAM products and the use of
an unidentified CMP tool in semiconductor manufacturing is misplaced. 888 F.3d 1256, 1260
(Fed. Cir. 2018); see also F2VS Tech. , LLC v. Ruckus Wireless, Inc. , No . 17-cv-756-RGA, D.I.
28 (D. Del. Jul. 31 , 2018). In Disc Disease, the Complaint specifically identified all accused
products by name and with attached photos. Id. Here, Plaintiff only identifies a single product
by name. (D.1. 1 ,i,i 23-24, 37-38, 49-50). For the remainder of the accused infringing Samsung
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DRAM products and the CMP tool used in semiconductor manufacturing, the Complaint fails to
meet the pleading standard.
Where an accused infringing product is not identified by name, the plaintiff must allege
how the accused infringing class of products infringe the asserted patents. The plaintiff must go
beyond "merely copying the language of a claim element, and then baldly stating (without more)
that an accused product has such an element" to assert a plausible claim for infringement. North
Star, 2017 WL 5501489, at *2. "There needs to be some facts alleged that articulate why it is
plausible that the other party' s product infringes that patent claim . .. ." Id. ; see also SIPCO,
LLC v. Streetline, Inc., 230 F. Supp. 3d 351 , 353 (D. Del. 2017) ("Right now, Plaintiff makes
two factual allegations. One, here are [] patents we own. Two, you sell some products ... .
Plaintiff makes a legal conclusion, to wit, the sales of your products infringe our patents. This is
insufficient to plausibly allege patent infringement.").
Here, Plaintiffs Complaint substantially mirrors the claim language in the ' 559 patent,
the ' 492 patent, the ' 201 patent, and the ' 386 patent. 3 (D.I. 10 at 11-12; D.I. 14-1 Ex. B-D, F).
The question is whether Plaintiffs additions and alterations to the claim language are sufficient
to allege facts articulating "why it is plausible that [Samsung DRAM products and the CMP tool]
infringe[]" the asserted claims. North Star Innovations, 2017 WL 5501489, at *2. They do not.
The slight alterations to the claim language by using other well-known nomenclature to describe
Defendants' products do nothing to articulate why the accused class of Samsung DRAM
products infringe the asserted patents. Nor do the alterations articulate why or how the use of the
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Plaintiff's allegations of the CMP tool 's infringement of method claims in the '974 patent do not merely "parrot"
the claim language. (D.l. 14-1 , Ex. E). However, as noted above, these claims still fail because Plaintiff has not
sufficiently identified the infringing actor.
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CMP tool in semiconductor manufacturing infringes the '386 patent. Plaintiff's Complaint fails
to move beyond the legal conclusions that Samsung DRAM products infringe the '492, '559, and
'201 patents because they are comprised of all elements in the claim and the CMP tool infringes
the '3 86 patent because it is comprised of all elements of the claim. This, without more, is
insufficient to plausibly allege patent infringement of a class of products under Rule 12(b)(6).
Thus, Plaintiff's Complaint fails to sufficiently plead direct infringement of the '492, '559, and
'201 patents by the general class of Samsung DRAM products or of the '386 patent by
manufacturing semiconductors using the CMP tool.
ii. Indirect Infringement
To sufficiently allege indirect infringement, a Complaint must also contain allegations of
an underlying act of direct infringement. Varian Med. Sys. , Inc. v. Elekta AB, 2016 WL
3748772, at *3 (D. Del. July 12, 2016) (citing Limelight Networks, Inc. v. Akamai Techs. , Inc.,
134 S. Ct. 2111, 2117 & n.3 (2014)). To the extent that direct infringement of the patents-in-suit
has not been sufficiently pled, the indirect infringement claims also suffer from pleading defects.
E. Plaintiff's Request for Leave to Amend
Plaintiff has requested that the Court grant it leave to amend its Complaint to cure any
defects. (D.I. 13 at 18-19). Defendants have not stated any opposition to this request. (D.I. 15).
As Plaintiff recognizes, "In the absence of any apparent or declared reason ... the leave sought
should, as the rules require, be 'freely given. "' Foman v. Davis, 371 U.S . 178, 182 (1962). The
Court will grant Plaintiffs request for leave to amend its Complaint.
IV.
CONCLUSION
For the reasons stated above, the Defendants' Motion to Dismiss for Failure to State a
Claim is GRANTED. Plaintiff's request for leave to amend is also GRANTED .
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An accompanying order will be entered.
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