Enthone Inc. v. BASF Corp.

126 F.Supp.3d 281

ENTHONE INC., Plaintiff,

v.BASF CORPORATION, Defendant.

No. 1:15–cv–233 (TJM/RFT).

United States District Court, N.D. New York.

Signed Aug. 27, 2015.

Christopher V. Fenlon, Michael L. Koenig, Hinckley, Allen Law Firm, Albany, NY, Kyle G. Gottuso, Marc W. Vander Tuig, Robert M. Evans, Jr., Senniger, Powers Law Firm, St. Louis, MO, for Plaintiff.

Robert F. Perry, James E. Berger, King, Spalding Law Firm, New York, NY, Timothy G. Barber, King & Spalding LLP, Charlotte, NC, for Defendant.

DECISION & ORDER

THOMAS J. McAVOY, Senior District Judge.

I. INTRODUCTION

Plaintiff Enthone Inc. ("Enthone") commenced this action alleging direct and indirect patent infringement against Defendant BASF Corporation ("BASF") under 35 U.S.C. § 271. BASF moves to dismiss Enthone's indirect patent infringement claims pursuant to Fed.R.Civ.P. 12(b)(6). Dkt. No. 15. Enthone has opposed the motion, and BASF has replied. Dkt. Nos. 17, 19. The Court has considered the parties' submissions and, for the reasons that follow, BASF's motion is granted in part and denied in part.

II. BACKGROUND

Enthone is a corporation that, among other things, manufactures and sells chemicals. Compl. at ¶¶ 1, 11. Some of those chemicals are used in the manufacture of microelectronics, specifically the electrolytic plating of copper onto semiconductor substrates. Id. at ¶¶ 11, 12. In 2007 and 2010, the United States Patent and Trademark Office issued U.S. Patent Nos. 7,303,992 ("the '992 patent") and 7,815,786 ("the '786 patent"), respectively, which are entitled "Copper Electrodeposition in Microelectronics." Id. at ¶¶ 6, 8. Enthone currently owns both patents. Id. at ¶¶ 7, 9.

Copper can be deposited by electrolytic plating to fill the interconnect features on substrates. Compl. at ¶ 13. Some electrolytic copper plating systems rely on "superfilling" or "bottom-up growth" to deposit copper into the interconnect features. Id. at ¶ 14. Superfilling involves filling a feature from the bottom up, rather than at an equal rate on all of its surfaces, to avoid seams and pinching off that can result in voiding.Id. at ¶ 15. As electronics have decreased in size, the smaller device sizes and increased circuit density require decreasing the dimensions of interconnect features. Id. at ¶ 16. Inventors at Enthone discovered that certain suppressor agents comprising polyether groups bonded to nitrogen-containing species achieve superior fill speeds and polarization. Id. at ¶ 17. The discoveries of Enthone's inventors, including electrolytic copper plating compositions with suppressor agents having polyether groups bonded to a nitrogen-containing species and related electroplating methods, are disclosed and claimed in the '992 and '786 patents. Id. at ¶ 18.

According to Enthone's complaint, BASF is a competitor of Enthone and is also active in the manufacture and sale of chemicals used in the electrolytic plating of copper onto semiconductor substrates. Id. at ¶ 19. Enthone alleges that BASF has made, used, sold, or offered for sale compositions for electrolytic copper plating solutions, which—when prepared according to BASF's instructions—contain a source of copper ions sufficient for electrolytic plating of copper onto a semiconductor substrate and a specific suppressor with a polyether group bonded to a nitrogen-containing species having the specific attributes described and claimed in Enthone's '992 and ' 786 patents ("Electrolytic Copper Plating Products"). Id. at ¶ 20. Based at least on BASF's pre-suit correspondence, BASF's website and online brochures, and BASF's own published patent applications, Enthone believes that this allegation will have additional evidentiary support after a reasonable opportunity for discovery. Id. Enthone further alleges that copper plating solutions made with one or more of BASF's CUPUR® series products contain a source of copper ions sufficient for electrolytic plating of copper onto a semiconductor substrate and a specific suppressor with a polyether group bonded to a nitrogen-containing species having the specific attributes described and claimed in Enthone's '992 and '786 patents. Id. at ¶ 21. In addition, Enthone alleges upon information and belief that BASF sells and distributes its Electrolytic Copper Plating Products to customers in the United States, including shipping, offering to sell, and selling its Electrolytic Copper Plating Products into the Northern District of New York, and induces the infringing use of its Electrolytic Copper Plating Products in the Northern District of New York. Id. at ¶ 22.

In a letter dated June 30, 2014, Enthone informed BASF of the '992 and ' 786 patents and requested BASF to either "verify or disprove" Enthone's belief that BASF was infringing these patents. Id. at ¶ 23. In the June 30, 2014 letter, Enthone also offered to protect the confidentiality of any information provided by BASF. Id. at ¶ 24. On August 14, 2014, an attorney for BASF responded to Enthone's letter requesting more information before BASF could respond to Enthone's June 30 letter. Id. at ¶ 25. On August 20, 2014, Enthone responded to BASF's attorney by indicating that Enthone believed BASF's copper electroplating suppressor products that contained a polyether compound which comprises a combination of propylene oxide (PO) repeat units and ethylene oxide (EO) repeat units bonded to a nitrogen-containing species infringed the '992 and '786 patents. Id. at ¶ 26. Specifically, Enthone identified BASF's CUPUR® product line. Id. In an email dated September 12, 2014, BASF's attorney requested additional time to respond to Enthone's letter.Id. at ¶ 27.

After not hearing from BASF for several weeks, Enthone sent a follow up email on September 29, 2014. Id. BASF's attorney replied that it would respond to Enthone's letter by October 3, 2014. Id. On October 7, 2014, BASF's attorney again wrote Enthone, stating that he had not had a chance to meet with his client and that he would do so by October 8, 2014. Id. at ¶ 28. Enthone still had not heard from BASF on January 21, 2015, so Enthone sent another email to BASF's counsel. Id. at ¶ 29. In its email of January 21, 2015, Enthone requested a response from BASF by January 28, 2015. Id. BASF's counsel responded on January 28, 2015, and denied that BASF infringes any "valid claim" of the '786 or '992 patents. Id. at ¶ 30. Enthone sent BASF a response on January 30, 2015. Id. at ¶ 31. BASF has not further responded and Enthone has been unable to establish any further communication with BASF. Id. at ¶ 32.

Enthone's '992 patent details "[a] method for electroplating a copper deposit onto a semiconductor integrated circuit device substrate with electrical interconnect features including submicron-sized features." Dkt. No. 1 Exhibit A. Count 1 of Enthone's Complaint alleges that BASF directly infringed Enthone's '992 patent and that BASF indirectly infringed the ' 992 patent by inducing infringement and contributing to the infringement of the patent. Compl. at ¶¶ 35, 37, 42, 43.

Enthone's '786 patent details "[a]n electrolytic plating composition for electrolytically plating [copper ] onto a semiconductor integrated circuit substrate having a planar plating surface and submicron-sized interconnect features by immersion of the semiconductor integrated circuit substrate into the electrolytic solution." Dkt. No. 1 Exhibit B. Count 2 of Enthone's Complaint alleges that BASF directly infringed Enthone's '786 patent and that BASF indirectly infringed the '786 patent by inducing infringement and contributing to the infringement of the patent. Compl. at ¶¶ 48, 50, 55, 56.

Enthone alleges that BASF directly and indirectly infringed Enthone's ' 992 and '786 patents and commenced this action on February 27, 2015. See Compl. generally. BASF filed a partial motion to dismiss on May 4, 2015. Dkt. No. 15. In response, Enthone filed a memorandum in opposition to BASF's partial motion to dismiss on May 21, 2015. Dkt. No. 17. BASF filed a reply brief on May 28, 2015. Dkt. No. 19.

III. STANDARD OF REVIEW

Rule 8(a) provides that a pleading shall contain "a short and plain statement of the claim showing that the pleader is entitled to relief." Fed.R.Civ.P. 8(a)(2). On a motion to dismiss, the Court must accept "all factual allegations in the complaint as true, and draw[ ] all reasonable inferences in the plaintiff's favor." Holmes v. Grubman, 568 F.3d 329, 335 (2d Cir.2009) (internal quotation marks omitted). This tenet does not apply to legal conclusions. Ashcroft v. Iqbal, 556 U.S. 662, 678, 129 S.Ct. 1937, 173 L.Ed.2d 868 (2009).

"To survive a motion to dismiss, a complaint must contain sufficient factual matter, accepted as true, to state a claim to relief that is plausible on its face." Id. (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007) ). "Threadbare recitals of the elements of a cause of action, supported by mere conclusory statements, do not suffice." Id. While Rule 8(a)(2)"does not require detailed factual allegations, ... it demands more than an unadorned, the-defendant-harmed-me-accusation." Id. (citation and internal quotation marks omitted). A claim will only have "facial plausibility when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged." Id. A complaint which "tenders ‘naked assertion[s]’ devoid of ‘further factual enhancement’ " is insufficient. Id. (citation omitted).

IV. DISCUSSION

"In addition to direct infringement, the patent statutes also create liability for so-called indirect infringement, which generally falls into two categories: induced and contributory infringement[,]" both of which are alleged here. Medgraph, Inc. v. Medtronic, Inc., 111 F.Supp.3d 346, 2015 WL 3938253 (W.D.N.Y. June 29, 2015). BASF argues that Enthone's "allegations are mere legal conclusions plead[ed] ‘upon information and belief’ that do not ‘allow[ ] the court to draw the...