Hitachi Kokusai Elec. Inc. v. Asm Int'l

HITACHI KOKUSAI ELECTRIC INC., et al., Plaintiffs, v. ASM INTERNATIONAL, N.V., et al., Defendants.

Case No. 17-cv-06880-BLF

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION

November 21, 2018

ORDER DENYING DEFENDANTS' MOTION TO DISMISS COUNTS VI AND VII OF SECOND AMENDED COMPLAINT

[Re: ECF 58]

Before the Court is Defendants' Motion to Dismiss Counts VI and VII of Second Amended Complaint for Patent Infringement ("Motion"). Motion, ECF 58. The Court heard oral argument on Defendants' Motion on November 8, 2018 ("the Hearing"). Having considered the oral argument, briefing, and relevant law, and for the reasons set forth below, the Court hereby DENIES Defendants' Motion to Dismiss Counts VI and VII of Second Amended Complaint.

I. BACKGROUND

Defendants previously filed a similar motion to dismiss counts VI and VII of Plaintiffs' first amended complaint, see ECF 27, which the Court granted with leave to amend, see ECF 53. Plaintiffs subsequently filed a second amended complaint amending counts VI and VII, see ECF 57, and the present Motion followed, see ECF 58.

Plaintiffs allege that Defendants infringe seven patents: U.S. Patent Nos. 7,033,937 ("the '937 patent"), 6,576,063 ("the '063 patent"), 7,808,396 ("the '396 patent"), RE43,023 ("the '023 patent"), 6,744,018 ("the '018 patent"), 8,409,988 ("the '988 patent"), and 9,318,316 ("the '316 patent") (collectively, "the Asserted Patents"). Second Am. Compl. ("SAC") ¶¶ 15, 23-187, ECF 57. In particular, Counts VI and VII in the SAC plead infringement of the '988 patent and '316 patent, respectively.

The '988 patent relates to a method of manufacturing a semiconductor device capable of improving defects of conventional chemical vapor deposition ("CVD") and atomic layer deposition ("ALD") methods in order to realize a high film-formation rate. SAC ¶ 122. The SAC alleges that Defendants "have infringed [the '988 patent] and are currently infringing literally and/or under the doctrine of equivalents." Id. ¶ 123. According to the SAC, Defendants' A412 batch vertical furnace system, Eagle XP8 PEALD system, and Dragon XP8 PECVD system products have been "configured and operated by [Defendants] to perform the method of at least claim 1 of the '988 patent." Id. ¶ 124. The SAC further alleges that Defendants indirectly infringe the '988 patent by "actively and knowingly inducing others to make, use, sell, offer for sale, or import" the accused products. SAC ¶ 140. In addition, the SAC pleads that Defendants have "contributed to and/or are contributing to the infringement of the '988 patent by making, using, importing, offering for sale, and/or selling" the accused products. Id. ¶ 148.

The '316 patent relates to a method of manufacturing a semiconductor device where the method involves forming a thin film on a substrate by repeating a cycle that forms layers on a substrate. SAC ¶ 157. According to the SAC, Defendants "have infringed [the '316 patent] and are currently infringing literally and/or under the doctrine of equivalents." Id. ¶ 158. The SAC further alleges that Defendants' A412 batch vertical furnace system, Eagle XP8 PEALD system, and Dragon XP8 PECVD system products have been "configured and operated by [Defendants] to perform the method of at least claim 1 of the '316 patent." Id. ¶ 159. The SAC also alleges that Defendants indirectly infringe the '316 patent by inducing their customers to practice the claimed method. Id. ¶ 173. In addition, the SAC asserts a contributory infringement claim based on the '316 patent against Defendants. Id. ¶ 181.

II. LEGAL STANDARD

A. Requests for Judicial Notice

The Court may take judicial notice of documents referenced in the complaint, as well as matters in the public record. See Lee v. City of LA., 250 F.3d 668, 688-89 (9th Cir. 2001), overruled on other grounds by Galbraith v. Cty. of Santa Clara, 307 F.3d 1119, 1125-26 (9th Cir. 2002). In addition, the Court may take judicial notice of matters that are either "generallyknown within the trial court's territorial jurisdiction" or "can be accurately and readily determined from sources whose accuracy cannot reasonably be questioned." Fed. R. Evid. 201(b). Public records, including judgments and other court documents, are proper subjects of judicial notice. See, e.g., United States v. Black, 482 F.3d 1035, 1041 (9th Cir. 2007). However, "[j]ust because the document itself is susceptible to judicial notice does not mean that every assertion of fact within that document is judicially noticeable for its truth." Khoja v. Orexigen Therapeutics, Inc., 899 F.3d 988, 999 (9th Cir. 2018).

B. Federal Rule of Civil Procedure 12(b)(6)

"A motion to dismiss under Federal Rule of Civil Procedure 12(b)(6) for failure to state a claim upon which relief can be granted 'tests the legal sufficiency of a claim.'" Conservation Force v. Salazar, 646 F.3d 1240, 1241-42 (9th Cir. 2011) (quoting Navarro v. Block, 250 F.3d 729, 732 (9th Cir. 2001)). "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.'" Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007)).

Under Iqbal and Twombly, a court is "not bound to accept as true a legal conclusion couched as a factual allegation." Iqbal, 556 U.S. at 662, 678 (citing Twombly, 550 U.S. at 555). Hence, the rule that "[t]hreadbare recitals of the elements of a cause of action, supported by mere conclusory statements, do not suffice" applies in patent cases. See Comcast Cable Commc'ns, LLC v. OpenTV, Inc., 319 F.R.D. 269, 272 (N.D. Cal. 2017) (citing Iqbal, 556 U.S. at 678). Such pleading standards under Iqbal and Twombly apply to allegations of direct and indirect (i.e., induced and contributory) infringement. See Novitaz, Inc. v. inMarket Media, LLC, No. 16-CV-06795, 2017 WL 2311407, at *2 (N.D. Cal. May 26, 2017); Superior Industries, LLC v. Thor Global Enterprises Ltd., 700 F.3d 1287, 1295-96 (Fed. Cir. 2012); Finjan, Inc. v. Cisco Systems Inc., 2017 WL 2462423, *3-5 (N.D. Cal. 2017).

C. Federal Rule of Civil Procedure 12(b)(2)

Federal Rule of Civil Procedure 12(b)(2) authorizes a defendant to seek dismissal of an action for lack of personal jurisdiction. Fed. R. Civ. P. 12(b)(2). "Where [] the defendant'smotion is based on written materials rather than an evidentiary hearing, the plaintiff need only make a prima facie showing of jurisdictional facts to withstand the motion to dismiss." Ranza v. Nike, Inc., 793 F.3d 1059, 1068 (9th Cir. 2015) (internal quotation marks and citation omitted). Uncontroverted allegations in the complaint are taken as true, Schwarzenegger v. Fred Martin Motor Co., 374 F.3d 797, 800 (9th Cir. 2004), and factual disputes contained within declarations or affidavits are resolved in the plaintiff's favor, Boschetto v. Hansing, 539 F.3d 1011, 1015 (9th Cir. 2008).

Under Federal Rule of Civil Procedure 4(k)(1)(A), this Court has personal jurisdiction if the defendant would be "subject to the jurisdiction of a court of general jurisdiction in the state where the district court is located," here California. Because California's long-arm statute is coextensive with federal due process requirements, the Court may exercise personal jurisdiction so long as it comports with due process. See Mavrix Photo, Inc. v. Brand Techs., Inc., 647 F.3d 1218, 1223 (9th Cir. 2011). "[D]ue process requires that the defendant 'have certain minimum contacts' with the forum state 'such that the maintenance of the suit does not offend "traditional notions of fair play and substantial justice."'" Ranza, 793 F.3d at 1068 (quoting Int'l Shoe Co. v. Washington, 326 U.S. 310, 316 (1945)).

The Supreme Court has recognized two types of personal jurisdiction: (1) general (or all-purpose) jurisdiction and (2) specific (or case-specific) jurisdiction. See Goodyear Dunlop Tires Operations, S.A. v. Brown, 564 U.S. 915, 927 (2011). General jurisdiction is based on certain limited affiliations that the defendant has with the forum state. Id. at 919. In contrast, specific jurisdiction is based on the defendant's connections to the state with regard to the particular controversy at issue. Id.

III. DISCUSSION

Defendants (1) request judicial notice of various documents; (2) move to dismiss Counts VI and VII of the SAC for failure to state a claim under Rule 12(b)(6); and (3) move to dismiss Counts VI and VII of the SAC for lack of personal jurisdiction under Rule 12(b)(2). See Notice of Motion, ECF 58. The Court addresses each issue in turn.

A. Defendants' Request for Judicial Notice (ECF 59)

Defendants request judicial notice of four of Defendants' webpages concerning Defendants' research and development locations/activities and one "scholarly article." See Request for Judicial Notice at 1, ECF 59. Plaintiffs oppose Defendants' request for judicial notice on grounds that the four webpages are "irrelevant" and that the scholarly article is "subject to reasonable dispute . . . [and] is a highly disputed issue." See Opp'n at 21, ECF 68. The Court denies Defendants request for judicial notice in full. First, the four webpages are not directed to a fact of consequence in determining the present motion because Plaintiffs' infringement theories in Counts VI and VII of the SAC do not relate to the location or nature of Defendants' research and development activities. See generally SAC. Thus, the Court finds the webpages "irrelevant to the instant motion[]," and therefore declines to take judicial notice. See CYBERsitter, LLC v. People's Republic of China, 805 F. Supp. 2d 958, 964 (C.D. Cal. 2011). Second, the Court finds the contents of the "scholarly article" disputed, and as such, "cannot take judicial notice of the contents of [the] document[] for the truth of the matters asserted therein," see Rearden LLC v. Walt Disney Co., 293 F. Supp. 3d 963, 968 (N.D. Cal. 2018). In sum, Defendants' request for...