Hy-Tech Diode LLC v. Lumileds Holding BV

UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF ALABAMA

WESTERN DIVISION

HY-TECH DIODE, LLC, )

)

Plaintiff, )

) 7:19-cv-00116-LSC

v. )

)

LUMILEDS HOLDING B.V., and )

LUMILEDS MALAYSIA SDN. )

BHD, )

)

Defendants. )

MEMORANDUM OF OPINION AND ORDER

Plaintiff, HY-Tech Diode, LLC (“HY-Tech” or “Plaintiff”), brings this

patent infringement action against Defendants Lumileds Holding B.V. (“Lumileds

Holding”) and Lumileds Malaysia SDN. BHD (“Lumileds Malaysia”) (collectively,

“Defendants”). Before the Court are Defendants’ motions to dismiss for lack of

personal jurisdiction and failure to state a claim upon which relief can be granted

(docs. 24 & 25), and Defendants’ motion to stay discovery (doc. 37). For the reasons

stated below, Defendants’ respective motions to dismiss (docs. 24 & 25) are due to

be denied, and Defendants’ motion to stay discovery (doc. 37) is due to be denied as

moot.

I. BACKGROUND

HY-Tech is an Alabama limited liability company. HY-Tech is a subsidiary of

Hong-Yuan Technology Co., Ltd. (“Hong-Yuan”), a Chinese company. HY-Tech

was formed to commercialize a new manufacturing process for light-emitting diode

(“LED”) chips. HY-Tech is the assignee of U.S. Patent No. 7,749,038 (“’038

Patent”), the patent at issue in this case. HY-Tech is the sole owner of and has the

exclusive right to sue for infringement of the ‘038 Patent.

Defendant Lumileds Holding is a corporation organized under the laws of the

Netherlands, with its principal place of business in the Netherlands. Defendant

Lumileds Malaysia is a subsidiary of Lumileds Holding organized under the laws of

Malaysia, with its principal place of business in Malaysia.

In 2004, Yu-Chao Wu, the scientist who founded Hong-Yuan, developed a

new process to manufacture LEDs. His process eliminated the old “cup” process’s

inability to produce LEDs with consistent light color and intensity. Mr. Wu began

using his new process to produce and sell commercial LEDs. HY-Tech claims that

the entire industry soon adopted Mr. Wu’s process and that the process became

known as the “chip scale packaging” (“CSP”) process. Mr. Wu patented the

process in the Republic of China (Taiwan) on February 18, 2004, and he later

patented the process in the United States on February 17, 2005. The United States

Patent and Trademark Office issued U.S. Patent No. 7,749,038 to Hong-Yuan on

July 6, 2010. Hong-Yuan later assigned the patent to HY-Tech.

Based on public statements made by Defendants, HY-Tech learned that

Defendants incorporated CSP processing techniques into their manufacturing

process, thereby infringing the ‘038 Patent. HY-Tech alleges that three products

infringe the ‘038 Patent: (1) LUXEON Rebel LEDs, which are used by Mercedes-

Benz in Vance, Alabama; (2) the LUXEON FlipChip Line; and (3) LEDs that are

used in iPhones sold in Alabama. (See Doc. 2.) HY-Tech also alleges that, “[s]ince

at least 2015,” both Defendants have sold infringing products to Future Lighting

Solutions in Huntsville, Alabama, and to Mercedes-Benz in Vance, Alabama. (Id. at

26–27.) HY-Tech hired an expert in materials science and engineering to test a CSP

LED product allegedly made by Defendants. The expert found that the process used

to make the tested product was consistent with at least Claims 1, and likely Claims 3

and 17, of HY-Tech’s ‘038 Patent and was inconsistent with prior LED

manufacturing processes.

Because Defendants lack the right to use or sell products in the United States

that were produced using the process claimed in the ‘038 Patent, HY-Tech brought

suit. HY-Tech filed its corrected complaint on February 5, 2019, asserting claims of

patent infringement against both defendants. (See Doc. 2.) In response, each

defendant moves to dismiss for lack of personal jurisdiction and failure to state a

claim. (See Docs. 24 & 25.)

II. PERSONAL JURISDICTION

A. STANDARD

In a Rule 12(b)(2) motion to dismiss, the plaintiff generally “bears the burden

of establishing a prima facie case of jurisdiction over the movant, non-resident

defendant.” PVC Windoors, Inc. v. Babbitbay Beach Constr., N.V., 598 F.3d 802, 810

(11th Cir. 2010) (quoting Morris v. SSE, Inc., 843 F.2d 489, 492 (11th Cir. 1988)).

“A prima facie case is established if the plaintiff presents enough evidence to

withstand a motion for directed verdict.” Madara v. Hall, 916 F.2d 1510, 1514 (11th

Cir. 1990). The court must treat facts alleged in the complaint as true if they are not

controverted by affidavits submitted by the defendant. Id. However, if the

defendant submits affidavits, the plaintiff must produce additional evidence

supporting jurisdiction unless the defendants’ affidavits are only conclusory. Stubbs

v. Wyndham Nassau Resort & Crystal Palace Casino, 447 F.3d 1357, 1360 (11th Cir.

2006). When the plaintiff’s evidence conflicts with the defendant’s evidence, the

court must “construe all reasonable inferences in favor of the plaintiff.” Id. Further,

“where a defendant who purposefully has directed his activities at forum residents

seeks to defeat jurisdiction,” the defendant must then “present a compelling case

that the presence of some other considerations would render jurisdiction

unreasonable.” Burger King Corp. v. Rudzewicz, 471 U.S. 462, 477 (1985); Avocent

Huntsville Corp. v. Aten Intern. Co., Ltd., 552 F.3d 1324, 1331 (Fed. Cir. 2008).

A federal district court “may exercise personal jurisdiction to the extent

authorized by the law of the state in which it sits and to the extent allowed under the

Constitution.” Meier ex rel. Meier v. Sun Int’l Hotels, Ltd., 288 F.3d 1264, 1269 (11th

Cir. 2002); see also Daimler AG v. Bauman, 571 U.S. 117, 125 (2014). Personal

jurisdiction is generally a two-step inquiry, as the court must consider whether

exercising personal jurisdiction is consistent with both the forum state’s long-arm

statute and the Due Process Clause of the Fourteenth Amendment. Mut. Serv. Ins.

Co. v. Frit Indus., Inc., 358 F.3d 1312, 1319 (11th Cir. 2004). However, for federal

courts in Alabama, “the two inquiries merge, because Alabama’s long-arm statute

permits the exercise of personal jurisdiction to the fullest extent constitutionally

permissible.” Sloss Indus. Corp. v. Eurisol, 488 F.3d 922, 925 (11th Cir. 2007) (citing

Ala. R. Civ. P. 4.2(b)); see also Ex parte Edgetech I.G., Inc., 159 So. 3d 629, 633 (Ala.

2014). Thus, this Court need only consider the limits of the Due Process Clause.

Mut. Serv. Ins. Co., 358 F.3d at 1319.

To subject a nonresident defendant to personal jurisdiction, due process

requires that the defendant “have certain minimum contacts with [the forum] such

that the maintenance of the suit does not offend ‘traditional notions of fair play and

substantial justice.’” Int’l Shoe Co. v. Washington, 326 U.S. 310, 316 (1945) (quoting

Milliken v. Meyer, 311 U.S. 457, 463 (1940)). There are two types of personal

jurisdiction—general jurisdiction and specific jurisdiction—but both are based on

the defendant’s contacts with the forum state. General jurisdiction exists over

defendants “when their affiliations with the State are so continuous and systematic

as to render them essentially at home in the forum State.” Goodyear Dunlop Tires

Operations, S.A. v. Brown, 564 U.S. 915, 919 (2011). The contacts must be so great

that any suit in the forum state is justified, even on matters unrelated to the

defendant’s contacts with the forum state. See Int’l Shoe Co., 326 U.S. at 318.

Corporate defendants are subject to general jurisdiction at their place of

incorporation and their principal place of business. See Daimler, 571 U.S. at 137.

“‘[A] corporation’s operations in a forum other than its formal place of

incorporation or principal place of business’ will be ‘so substantial and of such a

nature as to render the corporation at home in that State’ only in ‘exceptional’

cases.” Carmouche v. Tamborlee Mgmt., Inc., 789 F.3d 1201, 1204 (11th Cir. 2015)

(quoting Daimler, 571 U.S. at 139 n.19).

By contrast, the inquiry whether a court may assert specific jurisdiction over

a nonresident defendant focuses on “the relationship among the defendant, the

forum, and the litigation.” Keeton v. Hustler Magazine, Inc., 465 U.S. 770, 775 (1984)

(quoting Shaffer v. Heitner, 433 U.S. 186, 204 (1977)). For a court to exercise specific

jurisdiction, the suit must “arise out of or relate to” the defendant’s contacts with

the forum state. Bristol-Myers Squibb Co. v. Superior Court, 137 S. Ct. 1773, 1786

(2017). Further, the defendant’s contacts must create a “substantial connection”

with the forum state. Walden v. Fiore, 571 U.S. 277, 284 (2014). Specific jurisdiction

does not require a large volume of contacts with the forum state, as even a single

purposeful contact can give rise to personal jurisdiction. See McGee v. Int’l Life Ins.

Co., 355 U.S. 220, 223 (1957); see also Licciardello v. Lovelady, 544 F.3d 1280, 1285

(11th Cir. 2008) (“The Court has made clear . . . that ‘[s]o long as it creates a

“substantial connection” with the forum, even a single act can support

jurisdiction.’” (citing Burger King, 471 U.S. at 475 n.18)). The contacts with the

forum state must be purposeful and created by the “defendant himself,” not merely

“between the plaintiff (or third parties) and the forum State.” Walden, 571 U.S. at

284 (internal citation omitted). Related to purposefulness, the court must determine

whether the defendant has a sufficient connection to the forum “such that he should

reasonably anticipate being haled into court there.” World-Wide Volkswagen Corp. v.

Woodson, 444 U.S. 286, 297 (1980) (citations omitted).

Even when a nonresident defendant has sufficient contacts with the forum

state, this Court must also consider whether the exercise of specific jurisdiction

would “offend ‘traditional notions of fair play and substantial justice.’” Asahi Metal

Indus. Co. v. Superior Court, 480 U.S. 102, 113 (1987) (quoting Int’l Shoe Co., 326

U.S. at 316). This analysis requires weighing various factors: the burden placed upon

the defendant, the interests of the forum state in deciding the dispute, the plaintiff’s

interest in litigating in that forum, the interests of the interstate judicial system in an

efficient resolution of disputes, and the interests of fundamental social policies. See

World-Wide Volkswagen Corp., 444 U.S. at 292; Future Tech. Today, Inc. v. OSF

Healthcare Sys., 218 F.3d 1247, 1251 (11th Cir. 2000) (per curiam).

For patent infringement cases, the Federal Circuit has adopted general and

specific personal jurisdiction standards that closely resemble the standards

articulated by the Supreme Court. See Silent Drive, Inc. v. Strong Indus., Inc., 326

F.3d 1194, 1200 (Fed. Cir. 2003) (citing Helicopteros Nacionales de Colombia, S.A. v.

Hall, 466 U.S. 408, 416 (1984)) (general jurisdiction requires continuous and

systematic contacts); Avocent Huntsville Corp., 552 F.3d at 1332 (specific jurisdiction

requires that (1) defendant have minimum contacts with the forum, (2) the suit arises

out of contacts with the forum, and (3) the exercise of jurisdiction is reasonable and

fair). Regarding specific jurisdiction, the inquiry “is relatively easily discerned from

the nature and extent of the commercialization of the accused products or services

by the defendant in the forum.” Avocent Huntsville Corp., 552 F.3d at 1332 (citing

Red Wing Shoe Co. v. Hockerson-Halberstadt, Inc., 148 F.3d 1355, 1360 (Fed. Cir.

1998)). “[T]he situs of the infringement is wherever an offending act is committed,”

whether that act be the making, using, offering to sell, or selling of any patented

invention. N. Am. Philips Corp. v. American Vending Sales, Inc., 35 F.3d 1576, 1579

(Fed. Cir. 1994). “[A] sale may occur at multiple locations, including the location of

the buyer, for purposes of personal jurisdiction.” Halo Elecs., Inc. v. Pulse Elecs., Inc.,

831 F.3d 1369, 1377 (Fed. Cir. 2016) (citing N. Am. Philips, 35 F.3d at 1579).

B. DISCUSSION

HY-Tech argues that Lumileds Malaysia and Lumileds Holding are subject to

both general and specific jurisdiction in Alabama. In its corrected complaint (doc.

2), HY-Tech makes the same jurisdictional allegations against both Defendants; as

such, HY-Tech collectively refers to Lumileds Malaysia and Lumileds Holding as

“Defendants” or “Lumileds” in its discussion of personal jurisdiction. Therefore,

this Court will treat the jurisdictional allegations made about “Lumileds” as

applying to both Lumileds Malaysia and Lumileds Holding.

HY-Tech states in the corrected complaint that Lumileds Malaysia and

Lumileds Holding sell “products, including the infringing products detailed in this

Complaint, in Alabama to and through automobile manufacturers such as Mercedes-

Benz in Vance, Alabama, and lighting distributors such as Future Lighting Solutions

in Huntsville, Alabama.” (Id. at 3.) HY-Tech then alleges that Lumileds

Malaysia and Lumileds Holding “transact[] business in the State of Alabama . . . by

conducting at least a portion of the alleged infringement in Alabama, by regularly

doing or soliciting business in Alabama, by maintaining continuous and systematic

contacts in Alabama, by purposefully availing [themselves] of the privileges of doing

business in Alabama, and by deriving substantial revenue from goods or services

provided to individuals or entities located in Alabama, or some combination of the

foregoing.” (Id.) HY-Tech further alleges that, “[s]ince at least 2015,” Lumileds

Malaysia and Lumileds Holding have “import[ed] and [sold] the Lumileds CSP

LEDs to manufacturers and distributors in the United States, such as Mercedes-

Benz and Future Lighting Solutions.” (Id. at 26–27.)

To rebut HY-Tech’s allegations, Lumileds Malaysia and Lumileds Holding

each submitted a declaration from Christine Rutherford (“Rutherford”). (See docs.

24-2 & 25-2.) Rutherford is an employee of Lumileds LLC, not Lumileds Malaysia

or Lumileds Holding. (See id.) Regarding Lumileds Holding, Rutherford’s

declaration states that Lumileds Holding “is only a holding company, and does not

engage in commercial sales activities anywhere in the world.” (Doc. 25-2 at 2.) It

further states that Lumileds Holding “does not conduct any form of business in the

United States . . . [n]or does it exercise any form of physical possession or control

over any place of business in the United States.” (Id.)

Regarding Lumileds Malaysia, Rutherford’s declaration states that Lumileds

Malaysia “has no physical place of business . . . in the United States. Nor does it

exercise any form of physical possession or control over any place of business in the

United States.” (Doc. 24-2 at 2.) The declaration further states that, aside from

sales to Lumileds LLC, Lumileds Malaysia “does not sell products to entities or

individuals in [sic] that are located in the United States.” (Id.) Finally, Lumileds

Malaysia “has not shipped any products to Alabama, offered any products for sale

in Alabama, or sold any products in Alabama.” (Id. at 3.)

Rutherford did not explain the foundation for her knowledge of either

Lumileds Malaysia’s or Lumileds Holding’s business operations, “apart from [her]

role as an employee at non-party Lumileds LLC.” (Doc. 32 at 26.) HY-Tech

objected to the declarations, arguing that Rutherford lacks the personal knowledge

to make “categorical claims” about Lumileds Malaysia’s and Lumileds Holding’s

business operations. (Id.)

a. General Jurisdiction

This Court concludes that it lacks general personal jurisdiction over either

Lumileds Malaysia or Lumileds Holding. Lumileds Malaysia and Lumileds Holding

lack contacts with Alabama that are so continuous and systematic as to “render

[them] essentially at home” in Alabama. See Goodyear, 564 U.S. at 919. Neither

Lumileds Malaysia nor Lumileds Holding has its place of incorporation or its

principal place of business in Alabama. See Daimler, 571 U.S. at 137. HY-Tech’s

conclusory allegation that Lumileds Malaysia and Lumileds Holding have

continuous and systematic contacts with Alabama is not sufficient. HY-Tech pleads

no additional facts suggesting that either Lumileds Malaysia or Lumileds Holding

has such contacts that would render them “essentially at home” in Alabama, or

contacts that are “so substantial” as to make this one of the “exceptional” cases

where “a foreign corporation is ‘at home’ in a forum other than its place of

incorporation or principal place of business,” Carmouche, 789 F.3d at 1204 (citing

Daimler, 571 U.S. at 139 n.19).

b. Specific Jurisdiction

Though general jurisdiction is lacking, HY-Tech has alleged sufficient facts to

create a prima facie case of specific jurisdiction as to both Lumileds Malaysia and

Lumileds Holding. HY-Tech alleges that Lumileds Malaysia and Lumileds Holding

sell infringing products “in Alabama to and through automobile manufacturers such

as Mercedes-Benz in Vance, Alabama and lighting distributors such as Future

Lighting Solutions in Huntsville, Alabama,” (doc. 2 at 3), and that “[s]ince at least

2015,” Lumileds Malaysia and Lumileds Holding have “import[ed] and [sold] the

[infringing product] Lumileds CSP LEDs to manufacturers and distributors in the

United States, such as Mercedes-Benz and Future Lighting Solutions,” (id. at 26–

27). For purposes of personal jurisdiction, the sale itself may occur at the location of

the buyer. See Halo Elecs., 831 F.3d at 1377. Further, four years of sales to Alabama

entities constitute a sufficient connection to Alabama such that Lumileds Malaysia

and Lumileds Holding “should reasonably anticipate being haled into court [here].”

World-Wide Volkswagen Corp., 444 U.S. at 297. Thus, HY-Tech has sufficiently

alleged that Lumileds Malaysia and Lumileds Holding purposefully directed their

activities at residents of the forum. See Avocent Huntsville Corp., 552 F.3d at 1332.

Further, HY-Tech alleges that Lumileds Malaysia and Lumileds Holding’s sales of

CSP LEDs “infring[e], literally or under the doctrine of equivalents, at least Claims

1, 13, and 17” of HY-Tech’s ‘038 Patent. (Doc. 2 at 28.) Therefore, HY-Tech’s

claim arises out of or relates to Lumileds Malaysia’s and Lumileds Holding’s

activities in Alabama. See Bristol-Myers Squibb, 137 S. Ct. at 1786; Avocent Huntsville

Corp., 552 F.3d at 1332.

The question then becomes whether Lumileds Malaysia or Lumileds Holding

adequately rebutted HY-Tech’s prima facie showing of jurisdiction. The only

evidence offered by either Lumileds Malaysia or Lumileds Holding in rebuttal are

Rutherford’s respective declarations. (See Docs. 24-2 & 25-2.) This Court is not

convinced that Rutherford, an employee of non-party Lumileds LLC, has the

requisite personal knowledge to make categorical statements about the business

operations of Lumileds Malaysia or Lumileds Holding. Rutherford did not offer any

foundation for her knowledge of Lumileds Holding’s or Lumileds Malaysia’s

business operations “apart from [her] role as an employee at non-party Lumileds

LLC.” (Doc. 32 at 26.) For example, Rutherford states that Lumileds LLC is the

only U.S. entity to whom Lumileds Malaysia sells its products. (See Doc. 24-2 ¶ 6.)

But it is not clear from the declaration how a Lumileds LLC employee, even a high-

ranking employee like Rutherford, would have personal knowledge of all of the U.S.-

based customers of Lumileds Malaysia, a separate entity located in a different

country. A buyer ordinarily does not have personal knowledge of all of its seller’s

customers. Rutherford’s role as an employee of Lumileds LLC falls short of

“evidence . . . sufficient to support a finding that [Rutherford] has personal

knowledge of the matter.” See Fed. R. Evid. 602. Neither Lumileds Malaysia nor

Lumileds Holding offered an explanation as to why it did not submit a declaration

from one of its own employees, and neither responded to HY-Tech’s argument that

Rutherford lacks personal knowledge. Based on the evidence in the record, this

Court concludes that Lumileds Malaysia and Lumileds Holding have failed to rebut

HY-Tech’s prima facie showing of jurisdiction.

Further, Lumileds Malaysia and Lumileds Holding have failed to “present a

compelling case that the presence of some other considerations would render

jurisdiction unreasonable.” Burger King, 471 U.S. at 477. Neither Lumileds

Malaysia nor Lumileds Holding argued that litigating in this Court would be a

burden. By contrast, HY-Tech, an Alabama limited liability company, has an interest

in “obtaining convenient and effective relief” by litigating this dispute in Alabama.

See id. Further, Alabama itself has an interest in adjudicating this dispute, which

involves an Alabama limited liability company’s claims of patent infringement via

sales to Alabama entities. See id.

For the reasons discussed above, Lumileds Malaysia and Lumileds Holding

have failed to rebut HY-Tech’s prima facie showing of specific jurisdiction. Thus,

Lumileds Malaysia’s and Lumileds Holding’s respective motions to dismiss for lack

of personal jurisdiction are due to be denied.

III. FAILURE TO STATE A CLAIM

A. STANDARD

In general, a pleading must present “a short and plain statement of the claim

showing that the pleader is entitled to relief.” Fed. R. Civ. P. 8(a)(2). To withstand

a motion to dismiss, the complaint “must contain sufficient factual matter, accepted

as true, to ‘state a claim to relief that is plausible on its face.’” Lord Abbett Mun.

Income Fund, Inc. v. Tyson, 671 F.3d 1203, 1207 (11th Cir. 2012) (quoting Ashcroft v.

Iqbal, 556 U.S. 662, 678 (2009)). The plaintiff need not put forth “detailed factual

allegations” in support of the claim, but there must be enough to “allow[] the court

to draw the reasonable inference that the defendant is liable for the misconduct

alleged.” Iqbal, 556 U.S. at 678 (citing Bell Atl. Corp. v. Twombly, 550 U.S. 544, 556

(2007)).

In evaluating the sufficiency of a complaint, this Court “begin[s] by

identifying pleadings that, because they are no more than conclusions, are not

entitled to the assumption of truth.” Id. at 679. Next, this Court “assume[s] the

veracity” of well-pleaded, factual allegations to “determine whether they plausibly

give rise to an entitlement to relief.” Id. Only the complaint itself and any

attachments thereto may be considered, even when the parties attempt to present

additional evidence. See Adinolfe v. United Techs. Corp., 768 F.3d 1161, 1168 (11th

Cir. 2014); see also Fed. R. Civ. P. 12(d). Therefore, this Court did not consider any

of the parties’ evidentiary submissions in the following analysis.

The Federal Circuit generally reviews procedural issues according to the law

of the district court’s respective regional circuit. Cleveland Clinic Found. v. True

Health Diagnostics LLC, 859 F.3d 1352, 1359 (Fed. Cir. 2017). However, the Federal

Circuit has clarified the Iqbal and Twombly pleading standard as it applies to patent

infringement cases. A complaint’s disclosures and allegations must “provide [a

defendant] fair notice of infringement of the asserted patents.” Disc Disease Sols.

Inc. v. VGH Sols., Inc., 888 F.3d 1256, 1260 (Fed Cir. 2018). A plaintiff must allege

facts that support “a reasonable inference that all steps of the claimed method are

performed” by the defendant. Lyda v. CBS Corp., 838 F.3d 1331, 1339 (Fed. Cir.

2016).

B. DISCUSSION

HY-Tech alleges that Lumileds Malaysia and Lumileds Holding directly and

indirectly infringe HY-Tech’s ‘038 Patent. HY-Tech argues that Lumileds

Malaysia and Lumileds Holding directly infringe the ‘038 Patent by violating 35

U.S.C. § 271(g). Subsection (g) reads in relevant part:

Whoever without authority imports into the United States or offers to

sell, sells, or uses within the United States a product which is made by a

process patented in the United States shall be liable as an infringer, if

the importation, offer to sell, sell, or use of the product occurs during

the term of such process patent.

35 U.S.C. § 271(g) (emphasis added). HY-Tech also argues that Lumileds Malaysia

and Lumileds Holding commit indirect infringement by inducement in violation of

35 U.S.C. § 271(b).

In its corrected complaint (doc. 2), HY-Tech makes the same allegations of

infringement against both Defendants; as such, HY-Tech collectively refers to

Lumileds Malaysia and Lumileds Holding as “Defendants” or “Lumileds.”

Therefore, this Court will treat the general allegations of patent infringement made

about “Lumileds” as applying to both Lumileds Malaysia and Lumileds Holding.

HY-Tech alleges that both Lumileds Malaysia and Lumileds Holding

“manufacture, distribute, market and sell in the United States” a product meeting

all limitations of at least Claim 1, and likely Claims 3 and 17, of HY-Tech’s ‘038

Patent. (Doc. 2 at 26–27.) HY-Tech attached the ‘038 Patent to the corrected

complaint. Additionally, HY-Tech alleges that Defendants have made press

statements claiming that they use CSP technology, which allegedly refers to HY-

Tech’s patented process.

Further, HY-Tech specifies customers to whom Defendants allegedly sell

infringing products: Mercedes-Benz in Vance, Alabama, and Future Lighting

Solutions in Huntsville, Alabama. HY-Tech also identified three specific products

that allegedly infringe the ‘038 Patent: (1) LUXEON Rebel LEDs, which are used by

Mercedes-Benz in Vance, Alabama; (2) the LUXEON FlipChip Line; and (3) LEDs

that are used in iPhones sold in Alabama. Thus, HY-Tech has sufficiently alleged

that Defendants “sell [infringing products] within the United States” in violation of

35 U.S.C. § 271(b) such that HY-Tech is plausibly entitled to relief for patent

infringement. See Iqbal, 556 U.S. at 678. Further, one of the products, LUXEON

Rebel LEDs, is allegedly sold to Mercedes-Benz, who then installs the products in

its day-time running lights used in Alabama-manufactured cars. HY-Tech’s

corrected complaint also contains a photograph of a Mercedes-Benz car “advertised

as having LED daytime running lights [containing LUXEON Rebel LEDs]

manufactured by [Defendants].” (Id. at 16.) As Defendants are both foreign

business entities, these activities plausibly involve importation into the United

States, another violation of 35 U.S.C. § 271(g).

As to whether Defendants’ products employ the method outlined in the ‘038

Patent, HY-Tech had Dr. Gregory Thompson, a University of Alabama professor

specializing in metallurgical and materials engineering, analyze a sample of

Defendants’ allegedly infringing product. Dr. Thompson’s findings suggest that the

allegedly infringing product is consistent with all steps in at least one claim of the

‘038 Patent (Claim 1) and inconsistent with prior LED production methods. HY-

Tech’s corrected complaint sets forth Dr. Thompson’s analysis and conclusions—

including photographs—regarding how Defendants’ products meet the steps of at

least Claim 1 of the ‘038 Patent. Therefore, the allegations in HY-Tech’s corrected

complaint “provide [Defendants] fair notice of infringement of the asserted

patents,” see Disc Disease, 888 F.3d at 1260, and they support a reasonable inference

that Defendants sell and/or import into the United States products meeting all steps

in at least one claim of the process outlined in the ‘038 Patent, see Lyda, 838 F.3d at

1339 (Fed. Cir. 2016).

Defendants argue that HY-Tech’s decision to refer to them collectively as

“Defendants” or “Lumileds” in the corrected complaint means that neither

defendant is on sufficient notice of patent infringement. This argument is without

merit. HY-Tech’s reference to collective “Defendants” or “Lumileds” puts both

Defendants on the same notice as if HY-Tech had repeated the same allegations two

times: once directed at Lumileds Holding and once directed at Lumileds Malaysia.

The corrected complaint plausibly alleges patent infringement by both Lumileds

Holding and Lumileds Malaysia, regardless of how either defendant is named.

Based on the factual allegations made by HY-Tech in its corrected complaint,

which is all this Court may consider at the motion to dismiss stage, HY-Tech has

stated a plausible claim of patent infringement against both Defendants. Therefore,

Defendants’ motions to dismiss for failure to state a claim are due to be denied.

IV. CONCLUSION

For the reasons stated above, Defendants’ motions to dismiss (docs. 24 & 25)

are hereby DENIED. Further, Defendants’ motion to stay discovery (doc. 37) is

DENIED as MOOT.

DONE and ORDERED on September 27, 2019.

L. Scott Gf

United States District Judge

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