Semcon IP Inc. v. Texas Instruments Incorporated

MOTION to Dismiss for Lack of Jurisdiction

E.D. Tex.July 21, 2016

1 UNITED STATES DISTRICT COURT EASTERN DISTRICT OF TEXAS MARSHALL DIVISION SEMCON IP INC., Plaintiff, v. TEXAS INSTRUMENTS INCORPORATED, Defendant. Case No. 2:16-CV-440 TEXAS INSTRUMENTS INC.’S MOTION TO DISMISS Pursuant to Fed. R. Civ. P. 12(b), Defendant Texas Instruments Incorporated (“TI”) moves to dismiss Plaintiff Semcon IP Inc.’s (“Semcon”) Complaint for Patent Infringement (“Complaint”) for lack of subject matter jurisdiction, failure to join a party under Rule 19, and failure to state a claim upon which relief can be granted. In support of its motion, TI shows the following: I. Background Facts - Semcon Filed Near-Identical Complaints Asserting the Same Patents Against Multiple Defendants On April 25, 2016, Semcon filed near-identical complaints asserting US Patent Nos. 5,978,876; 7,100,061; 7,596,708; 8,566,627; and 8,806,247 against TI and STMicroelectronics (“STM”) in civil action nos. 2:16-CV-439 and 440, respectively.1 STM responded to the complaint on July 6, 2016, filing a motion to dismiss for lack of subject matter jurisdiction, failure to join a party under Rule 19, and failure to state a claim. Semcon IP Inc. v. STMicroelectronics Inc., et al., Civ. No. 2:16-CV-439, ECF Nos. 22-23. Semcon is currently scheduled to respond to STM’s motion to dismiss on August 8, 2016. 1 The same day, Semcon also filed near identical complaints against Huawei, MediaTek and ZTE in civil action nos. 2:16-CV-437, 438 and 441, respectively, but omitting the `876 patent. Case 2:16-cv-00440-JRG-RSP Document 17 Filed 07/21/16 Page 1 of 3 PageID #: 125 2 II. TI Moves to Dismiss Semcon’s Complaint on the Same Bases Advanced by STM Because the legal and factual bases supporting STM’s motion to dismiss apply equally to Semcon’s claims against TI, TI likewise moves to dismiss Semcon’s Complaint for lack of subject matter jurisdiction, failure to join a party under Rule 19, and failure to state a claim. To avoid burdening the Court with duplicative motion practice in multiple cases, and in of service Fed. R. Civ. P. 1’s goal of securing the just, speedy, and inexpensive determination of every action, TI incorporates STM’s motion and supporting affidavit (ECF Nos. 22 and 23) by reference as is fully set forth herein. As described in STM’s motion, Semcon lacks constitutional standing because a predecessor-in-interest retained certain substantial rights to the patents-in-suit, making Semcon a non-exclusive licensee. Relatedly, even if Semcon could somehow demonstrate constitutional standing, the joinder of the other holders of substantial rights would be necessary for prudential standing. Finally, because the complaints against STM and TI are identical but for the party identifying information and exemplar product names, STM’s motion to dismiss for failure to state a claim applies with equal force. Semcon has failed to plead sufficient facts to comply Fed. R. Civ. P. 8 as interpreted in Twombly, Iqbal, and their progeny, particularly in light of the recent deletion of Form 18, which exposes allegations of both direct and indirect patent infringement to the full impact of the Supreme Court’s pleading sufficiency jurisprudence. III. Semcon’s Complaint Should be Dismissed For the reasons expressed herein, and expressly incorporated from ECF Nos. 22 and 23 in Civ. No. 2:16-CV-439, TI respectfully asks this Court to dismiss Semcon’s Complaint for lack of subject matter jurisdiction pursuant to Fed. R. Civ. P. 12(b)(1), for failure to join a necessary party pursuant to Fed. R. Civ. P. 12(b)(7), and for failure to state a claim pursuant to Fed. R. Civ. P. 12(b)(6). Case 2:16-cv-00440-JRG-RSP Document 17 Filed 07/21/16 Page 2 of 3 PageID #: 126 3 Respectfully submitted, /s/ Wesley Hill Wesley Hill State Bar No. 24032294 E-mail: wh@wsfirm.com Andrea L. Fair State Bar No. 24078488 E-mail: andrea@wsfirm.com WARD, SMITH & HILL, PLLC 1507 Bill Owens Pkwy Longview, Texas 75604 (903) 757-6400 (telephone) (903) 757-2323 (facsimile) ATTORNEYS FOR DEFENDANT CERTIFICATE OF SERVICE I hereby certify that a copy of the foregoing document was filed electronically in compliance with Local Rule CV-5(a). Therefore, this document was served on all counsel who are deemed to have consented to electronic service. Local Rule CV-5(a)(3)(A). Pursuant to Fed. R. Civ. P. 5(d) and Local Rule CV-5(d) and (e), all other counsel of record not deemed to have consented to electronic service were served with a true and correct copy of the foregoing by email on this the 21st day of July, 2016. /s/ Wesley Hill Case 2:16-cv-00440-JRG-RSP Document 17 Filed 07/21/16 Page 3 of 3 PageID #: 127 UNITED STATES DISTRICT COURT EASTERN DISTRICT OF TEXAS MARSHALL DIVISION SEMCON IP INC., Plaintiff, v. TEXAS INSTRUMENTS INCORPORATED, Defendant. Case No. 2:16-CV-440 ORDER Before the Court is Defendant Texas Instruments Incorporated’s Motion to Dismiss Plaintiff Semcon IP Inc.’s Complaint for lack of subject matter jurisdiction pursuant to Fed. R. Civ. P. 12(b)(1), for failure to join a necessary party pursuant to Fed. R. Civ. P. 12(b)(7), and for failure to state a claim pursuant to Fed. R. Civ. P. 12(b)(6). Having considered the matter, the Court GRANTS Defendant’s Motion to Dismiss. Case 2:16-cv-00440-JRG-RSP Document 17-1 Filed 07/21/16 Page 1 of 1 PageID #: 128