LED WAFER SOLUTIONS LLC v. SAMSUNG ELECTRONICS CO. LTD., et al.

• Court: District Court, N.D. California
• Decided: June 16, 2026
• Docket: 3:22-cv-04809
• Status: Unknown

Opinion

1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 7 LED WAFER SOLUTIONS LLC, Case No. 22-cv-04809-AMO

8 Plaintiff, ORDER GRANTING 9 v. DEFENDANTS’ MOTIONS TO DISMISS & 10 SAMSUNG ELECTRONICS CO. LTD., et PLAINTIFF’S MOTION TO DISMISS al., 11 Re: Dkt. Nos. 285, 287, 301 Defendants.

12 13 This is a patent infringement case. The partial motions to dismiss from 14 Defendants/Counterclaim Plaintiffs Samsung Electronics Co., Ltd. and Samsung Electronics 15 America, Inc. (collectively, “Samsung”), Dkt. No. 285, and Defendant-Intervenor Seoul 16 Semiconductor Co., Ltd. (“Seoul Semiconductor”), Dkt. No. 287, were heard before this Court on 17 January 9, 2026. The voluntary motion to dismiss from Plaintiff/Counterclaim Defendant LED 18 Wafer Solutions, LLC (“LED Wafer”), Dkt. No. 301, was heard before this Court on June 11, 19 2026. Having read the papers filed by the parties and carefully considered their arguments therein 20 and those made at the hearing, as well as the relevant legal authority, and good cause appearing, 21 the Court GRANTS Samsung’s and Seoul Semiconductor’s partial motions to dismiss and 22 GRANTS LED Wafer’s voluntary dismissal for the following reasons. 23 I. BACKGROUND 24 Plaintiff LED Wafer is a Delaware company based in Waco, TX, that owns the asserted 25 patents. First Am. Compl. (Dkt. No. 172, “FAC”) ¶¶ 4-5. Defendant Samsung Electronics Co., 26 Ltd. is a Korean corporation, and Defendant Samsung Electronics America, Inc. is a New York 27 corporation. FAC ¶¶ 6-7. Intervenor-Defendant Seoul Semiconductor is a Korean company. 1 components accused of infringement.” Dkt. No. 23 at 6. 2 A. Factual Background 3 The “asserted patents” in LED Wafer’s First Amended Complaint are United States Patent 4 Nos. 8,941,137 (the “ ’137 patent”), 8,952,405 (the “ ’405 patent”), and 9,786,822 (the “ ’822 5 patent”). See FAC ¶ 19. Most relevant here, “[t]he ’137 Patent claims a “light emitting diode 6 (LED) device and packaging . . . manufactured using a vertical configuration including a plurality 7 of layers.” FAC ¶ 23. 8 For each patent, LED Wafer makes the same allegations:

9 Representatives of Viagan [the prior patent assignee] had discussions with representatives of Seoul Semiconductor for the 10 purpose of exploring a potential business partnership between Viagan and Seoul Semiconductor and exploring Seoul 11 Semiconductor’s potential use or adoption of Viagan’s LED technology. At this meeting, and in other related discussions, Viagan 12 presented its proprietary LED technology to Seoul Semiconductor, including technical personnel such as Eunee Chen, an employee of 13 Seoul Semiconductor. During these discussions, Viagan informed Seoul Semiconductor that Viagan had pending patent applications 14 covering Viagan’s LED technology and specifically identified the application from which the ‘137 Patent issued, i.e. Application No. 15 13/413,407 filed on March 6, 2012, as one such application covering the proprietary LED technology that Viagan was discussing with 16 Samsung.

17 On information and belief, due in part to these past discussions, Seoul Semiconductor has had actual knowledge of the ‘137 Patent 18 since its issuance, or at the latest, since its receipt or review of Plaintiff’s Original Complaint. 19 20 FAC ¶¶ 43-44; see also, e.g., ¶¶ 39-42 (describing similar events with Samsung). LED Wafer 21 alleges that it notified Seoul Semiconductor of a “pending patent application” from which the ’405 22 Patent ultimately issued, but never that it notified Seoul Semiconductor of the ’405 Patent itself. 23 FAC ¶¶ 86-87. LED Wafer alleges that Seoul Semiconductor should have known of the ’822 24 Patent because Viagan allegedly identified a patent application to which the ’822 Patent “claims 25 priority via a continuation.” FAC ¶¶ 127-28. 26 B. Procedural History 27 LED Wafer initiated this action against Samsung on March 25, 2021, in the Western 1 moved to dismiss the willful and indirect infringement claims. Dkt. No. 14. The Western District 2 of Texas court granted the motion and permitted LED Wafer “leave to amend its pleadings to 3 reassert these claims after the start of discovery if it is able to substantiate those allegations.” See 4 Dkt. No. 18. Samsung then answered the original complaint on August 16, 2021. Dkt. No. 19. 5 Seoul Semiconductor filed a motion to intervene as a defendant, Dkt. No. 23, which the Western 6 District of Texas court granted on November 22, 2021, Dkt. No. 39. 7 On November 26, 2021, Samsung moved to transfer the case to this District, which the 8 Western District of Texas court granted on August 22, 2022. See Dkt. No. 93. During the 9 pendency of that motion, discovery opened on March 4, 2022. Dkt. No. 57. 10 Here in the Northern District of California, Samsung filed an amended answer that 11 included counterclaims seeking declaratory judgment of noninfringement and invalidity of all 12 asserted patents. Dkt. No. 170. On December 16, 2022, LED Wafer filed its FAC, accusing 13 Samsung smartphones and tablets that include a “flash LED.” FAC ¶¶ 25, 66, 110. On January 3, 14 2023, LED Wafer filed its answer to Samsung’s counterclaims. Dkt. No. 175. 15 Samsung filed a partial motion to dismiss the FAC on January 14, 2023. Dkt. No. 178. 16 Shortly thereafter, Samsung moved to stay the case due to co-pending ex parte reexaminations 17 (“EPR”). Dkt. No. 185. On April 3, 2023, Judge Vince Chhabria granted Samsung’s motion to 18 stay and terminated the motions to dismiss subject to re-filing after the stay was lifted. Dkt. No. 19 198. Those EPRs concluded in August 2024, and the stay was lifted. Dkt. Nos. 215, 216. 20 LED Wafer then sought leave to amend its complaint a second time during the case 21 management conference held on October 10, 2024. Dkt. No. 238. The Court ordered LED Wafer 22 to file its motion, under an agreed briefing schedule, and any renewed motion to dismiss was 23 scheduled to follow an order on Plaintiff’s motion for leave. Dkt. No. 237. Consistent with the 24 Court’s order, the parties submitted full briefing on Plaintiff’s motion for leave to amend (Dkt. 25 No. 245 through Dkt. No. 250), and that motion was set for a hearing until Plaintiff’s former 26 counsel moved to withdraw from the case. See Dkt. No. 272. The Court administratively 27 terminated the motion for leave to amend, gave LED Wafer additional time to secure new counsel, 1 On September 15, 2025, instead of seeking leave to amend its complaint, LED Wafer gave 2 notice that it intended to proceed with the FAC as the operative pleading. Dkt. No. 276 at 1. LED 3 Wafer also gave notice that it would “no longer assert” the ’822 and ’405 patents so that it could 4 file a separate suit on those patents in the Eastern District of Texas. See Dkt. No. 276 at 1; see 5 also Compl., LED Wafer Sols., LLC v. Samsung Elecs. Co., No. 2:25-cv-00948 (E.D. Tex., filed 6 Sept. 15, 2025). On October 17, 2026, Samsung and Seoul Semiconductor renewed their partial 7 motions to dismiss claims from the FAC. Dkt. Nos. 285 & 287. Following complete briefing of 8 those motions and on the eve of the hearing, LED Wafer filed a motion to voluntarily dismiss the 9 action. Dkt. No. 301. 10 II. DISCUSSION 11 The Court proceeds chronologically and considers the partial motions to dismiss from 12 Samsung and Seoul Semiconductor before turning to LED Wafer’s motion to dismiss the 13 remainder of the case. 14 A. Samsung’s and Seoul Semiconductor’s Partial Motions to Dismiss 15 A motion to dismiss under Federal Rule of Civil Procedure 12(b)(6) tests for the legal 16 sufficiency of the claims alleged in the complaint. Ileto v. Glock, 349 F.3d 1191, 1199-1200 (9th 17 Cir. 2003). Under Federal Rule of Civil Procedure 8, which requires that a complaint include a 18 “short and plain statement of the claim showing that the pleader is entitled to relief,” Fed. R. Civ. 19 Pro. 8(a)(2), a complaint may be dismissed under Rule 12(b)(6) if the plaintiff fails to state a 20 cognizable legal theory, or has not alleged sufficient facts to support a cognizable legal theory. 21 Somers v. Apple, Inc., 729 F.3d 953, 959 (9th Cir. 2013). 22 While the court is to accept as true all the factual allegations in the complaint, it need not 23 accept legally conclusory statements unsupported by factual allegations. Ashcroft v. Iqbal, 556 24 U.S. 662, 678-79 (2009). The complaint must proffer sufficient facts to state a claim for relief that 25 is plausible on its face. Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555, 558-59 (2007) (citations 26 and quotations omitted). “A claim has facial plausibility when the plaintiff pleads factual content 27 that allows the court to draw the reasonable inference that the defendant is liable for the 1 do not permit the court to infer more than the mere possibility of misconduct, the complaint has 2 alleged – but it has not ‘show[n]’ – that the pleader is entitled to relief.” Id. at 679. 3 Review is generally limited to the contents of the complaint, although the court can also 4 consider a document on which the complaint relies if the document is central to the claims asserted 5 in the complaint, and no party questions the authenticity of the document. See Sanders v. Brown, 6 504 F.3d 903, 910 (9th Cir. 2007). The court may consider matters that are properly the subject of 7 judicial notice, Knievel v. ESPN, 393 F.3d 1068, 1076 (9th Cir. 2005); Lee v. City of Los Angeles, 8 250 F.3d 668, 688-89 (9th Cir. 2001), and may also consider documents referenced extensively in 9 the complaint and documents that form the basis of the plaintiffs’ claims. See No. 84 Emp’r- 10 Teamster Jt. Council Pension Tr. Fund v. Am. W. Holding Corp., 320 F.3d 920, 925 n.2 (9th Cir. 11 2003). If dismissal is warranted, it is generally without prejudice, unless it is clear that the 12 complaint cannot be saved by any amendment. Sparling v. Daou, 411 F.3d 1006, 1013 (9th Cir. 13 2005). 14 In this case, both Defendants move to dismiss LED Wafer’s claims for (1) willful 15 infringement and (2) indirect (induced and contributory) infringement on the basis that the FAC 16 lacks factual allegations establishing an essential element of all these forms of patent 17 infringement: Defendants’ knowledge of the patents-in-suit. The Court first takes up the 18 sufficiency of allegations related to pre-suit knowledge before turning to the portions of LED 19 Wafer’s claims arising from post-suit knowledge. 20 1. Pre-suit Knowledge 21 a. Knowledge of Patent Application 22 Each of the theories of infringement challenged by Defendants here, including willful, 23 contributory, and induced, all require plausible allegations of defendants’ knowledge of the 24 patents. To plead willful infringement, a plaintiff must allege facts demonstrating that the accused 25 infringer had: (1) “knowledge of the asserted patent,” (2) “knowledge of infringement,” and (3) 26 the “specific intent to infringe at the time of the challenged conduct.” Dali Wireless, Inc. v. 27 Corning Optical Commc’ns LLC, 638 F. Supp. 3d 1088, 1095 (N.D. Cal. 2022) (citing Bayer 1 Commonwealth Sci. & Indus. Rsch. Organisation, 28 F.4th 1247 (Fed. Cir. 2022)). “To willfully 2 infringe a patent, the patent must exist and one must have knowledge of it.” State Indus. v. A.O. 3 Smith Corp., 751 F. 2d 1226, 1236 (Fed. Cir. 1985). As the Federal Circuit ruled in the A.O. 4 Smith case, “[f]iling an application is no guarantee any patent will issue and a very substantial 5 percentage of applications never result in patents. What the scope of claims in patents that do 6 issue will be is something totally unforeseeable.” Id. at 1236; see also WBIP, LLC v. Kohler Co., 7 829 F.3d 1317, 1341 (Fed. Cir. 2016) (“Knowledge of the patent alleged to be willfully infringed” 8 is a “prerequisite.”). Similarly, to adequately plead contributory infringement, “the patent owner 9 must properly allege: ‘1) that there is direct infringement, 2) that the accused infringer had 10 knowledge of the patent, 3) that the component has no substantial noninfringing uses, and 4) that 11 the component is a material part of the invention.’ ” People.ai, Inc. v. SetSail Techs., Inc., No. 20- 12 cv-09148, 2021 WL 2333880, at *6 (N.D. Cal. June 8, 2021) (quoting Fujitsu Ltd. v. Netgear Inc., 13 620 F.3d 1321, 1326 (Fed. Cir. 2010)). Finally, “induced infringement under § 271(b) requires 14 knowledge that the induced acts constitute patent infringement.” Glob.-Tech Appliances, Inc. v. 15 SEB S.A., 563 U.S. 754, 766 (2011). As with the other forms of infringement described above, a 16 plaintiff alleging the knowledge requirement must demonstrate the accused inducer had actual 17 knowledge, i.e., both (1) “knew of the patent” and (2) “knew as well that ‘the induced acts 18 constitute patent infringement.’ ” Commil USA, LLC v. Cisco Sys., 575 U.S. 632, 639 (2015). 19 Here, LED Wafer alleges Defendants’ purported knowledge of then-pending patent 20 applications, not any knowledge of then-existing patents. Starting with Samsung, at the time of 21 the “potential business partnership” meetings that took place between Viagan and Samsung in 22 2013, which gave Samsung notice of the underlying technology, none of the asserted patents 23 existed. FAC ¶¶ 39, 43, 82, 86. Rather, none of the asserted patents issued until years later, in 24 2015 and 2017. FAC, Ex. A (’137 patent issued Jan. 27, 2015); Ex. B (’405 patent issued Feb. 10, 25 2015); Ex. C (’822 patent issued Oct. 10, 2017). As for the other Defendant, LED Wafer similarly 26 alleges that it notified Seoul Semiconductor of two patent applications that were filed years before 27 the asserted patents actually issued. FAC ¶¶ 44-45 (’137 patent); ¶¶ 86-87 (’405 patent). These 1 noted above, allegations of mere notice of patent applications are insufficient to establish notice of 2 patent infringement for purposes of a willful infringement claim – a patent application itself is not 3 notice of a patent since none yet exists, and a mere application cannot serve as the knowledge 4 basis for willful or indirect infringement. A.O. Smith, 751 F. 2d at 1236; see also MasterObjects, 5 Inc. v. Amazon.com, Inc., No. C 20-08103-WHA, 2021 WL 4685306, at *3 (N.D. Cal. Oct. 7, 6 2021) (“Knowledge of a patent cannot be plausibly alleged when the triggering event occurred 7 prior to the issuance of the patent.”). Therefore, LED Wafer’s allegations that Defendants were 8 aware of the applications preceding the asserted patents are insufficient to establish either 9 knowledge of the patents or knowledge of the infringement, and each of LED Wafer’s willful and 10 indirect infringement claims must fail as to all the asserted patents. 11 b. Willful Blindness 12 Seeking to overcome its deficiencies in alleging Defendants’ prior knowledge of the 13 asserted patents, LED Wafer suggests that “pleading knowledge of a patent application and ‘more’ 14 have been found to be sufficient” to allege pre-suit knowledge. Dkt. No. 290 at 15-16 (citing 15 Corephotonics, Ltd. v. Apple, Inc., No. 17-cv-06457-LHK, 2018 WL 4772340, at *8 (N.D. Cal. 16 Oct. 1, 2018)). The Supreme Court explained, “a willfully blind defendant is one who takes 17 deliberate actions to avoid confirming a high probability of wrongdoing and who can almost be 18 said to have actually known the critical facts.” Glob.-Tech Appliances, Inc., 563 U.S. at 769. In 19 Corephotonics, the court found allegations that a defendant’s knowledge of a patent application in 20 addition to willful ignorance of the resulting patent gave rise to a plausible inference of willful 21 blindness that supported the knowledge element of infringement. Corephotonics, 2018 WL 22 4772340, at *8. The plaintiff in that case collaborated closely with Apple for several years, 23 providing detailed schematics of its patented designs and technology, working closely with 24 Apple’s internal engineers and employees at Apple’s facilities, and providing Apple with physical 25 samples, simulations, demonstrations, and detailed design files. Id. at *5-6. The court found that 26 Apple had actual notice of issued patents, having cited one of Corephotonics’s issued patents in its 27 own patent applications and having expressly told Corephotonics not to send additional patents – 1 that Apple “believed that there was a high probability that it was infringing the Asserted Patents, 2 and that Apple took deliberate actions to avoid learning of that fact” sufficient to establish 3 knowledge in support of a claim of willful infringement. Id. at *26. 4 Such allegations are absent here. In contrast to Corephotonics, there is no pattern of years 5 of close collaboration between LED Wafer and either Defendant. Neither Defendant sought to 6 avoid receiving information regarding issued patents. Indeed, there are no allegations of existing, 7 noticed patents to which either Defendant could be willfully blind at the time of the meetings with 8 Viagan. FAC ¶¶ 43-44. LED Wafer’s argument that the knowledge element of its infringement 9 contentions can be satisfied by willful blindness must be rejected on these allegations. 10 Consequently, the Court will grant the motion to dismiss the willful and indirect claims of 11 infringement as to all the asserted patents. 12 2. Post-Suit Knowledge 13 LED Wafer also attempts to plead willful infringement for damages occurring since the 14 inception of this suit based upon the filing of the original complaint. See, e.g., FAC ¶ 41 15 (“Samsung had actual knowledge of the ’137 Patent upon its receipt of Plaintiff’s Original 16 Complaint.”); ¶¶ 44, 87, 128 (“. . . Seoul Semiconductor has had actual knowledge of the 17 [asserted] Patent . . . at the latest, since its receipt or review of Plaintiff’s Original Complaint”). 18 This argument focuses on willful infringement to the exclusion of contributory or induced 19 infringement. 20 “District courts across the country are divided over whether a defendant must have the 21 knowledge necessary to sustain claims of indirect and willful infringement before the filing of the 22 lawsuit.” ZapFraud, Inc. v. Barracuda Networks, Inc., 528 F. Supp. 3d 247, 249 (D. Del. 2021); 23 see also id. at 249 n.1 (collecting district court cases both permitting and disallowing an original 24 complaint to serve as a basis for willful or induced infringement claims). “Neither the Federal 25 Circuit nor the Supreme Court has addressed the issue.” Id. at 250 (going on to opine that it 26 “seems . . . neither wise nor consistent with principles of judicial economy to allow court dockets 27 to serve as notice boards for future legal claims for indirect infringement and enhanced 1 viable willfulness claim prior to suit then . . . the service of a patent infringement complaint cannot 2 bootstrap its way to willfulness”; but on the other hand, “a well-pled, detailed complaint laying out 3 a clear case of infringement could supply the knowledge (post-complaint) required for willfulness 4 once a defendant has had a reasonable period of time to evaluate the complaint’s contentions.” 5 Sonos, Inc. v. Google LLC, 591 F. Supp. 3d 638, 645 (N.D. Cal. 2022). 6 But in this case, even if the Court took the course of recognizing willfulness based on post- 7 suit conduct alone, LED Wafer still falls short because it fails to adequately allege deliberate or 8 intentional infringement in this intervening period. Subjective intent to infringe remains an 9 element of any claim for enhanced damages under a theory of willful infringement, and “[t]he 10 complaint must also contain allegations that ‘the accused infringer had a specific intent to infringe 11 at the time of the challenged conduct.’ ” Dali Wireless, 638 F. Supp. 3d at 1095-96 (citing Eko 12 Brands, LLC v. Adrian Rivera Maynez Enters., Inc., 946 F.3d 1367, 1379 (Fed. Cir. 2020)). 13 Moreover, those factual allegations must suffice “to render a claim of willfulness plausible, and 14 not merely possible.” Slot Speaker Techs., Inc. v. Apple, Inc., No. 13-cv-01161-HSG, 2017 WL 15 4354999, at *2 (N.D. Cal. Sept. 29, 2017) (citing Twombly, 550 U.S. at 570). 16 Here, LED Wafer fails to tip its allegations of post-suit willfulness from possible to 17 plausible. LED Wafer alleges nothing more than “garden-variety” conduct after initiation of the 18 lawsuit, far short of the specific intent to infringe required for willfulness. The post-suit 19 willfulness claims rest on the fact that “Samsung had actual knowledge of the [asserted patents] 20 upon its receipt of Plaintiff’s Original Complaint” and “has not taken any steps to design around 21 or otherwise avoid infringing” the asserted patents, such as by ceasing sales of the Galaxy S22 22 Smartphone. See FAC ¶¶ 41, 44, 84, 125. Those assertions, without more, do not cross the 23 threshold into plausible allegations of willfulness because requiring every patent defendant “to 24 cease sales at the time of the complaint . . . or face willfulness allegations” for continuing its 25 ordinary business conduct after being sued would prove unreasonable. See Dali Wireless, 638 F. 26 Supp. 3d at 1099. Courts regularly reject plaintiffs’ attempts to transform a defendant’s continued 27 sales following initiation of patent case into post-suit willfulness. See, e.g., id. at 1099; Slot 1 are equally consistent with a defendant who subjectively believes the plaintiff’s patent 2 infringement action has no merit.”). LED Wafer accordingly fails to advance intentional 3 infringement based on Defendants’ post-lawsuit business activity. Therefore, even if LED Wafer 4 established Defendants’ knowledge of infringement following initiation of this lawsuit by the 5 original complaint, the theory of willful infringement in the post-suit period falls short as 6 insufficiently pleaded. 7 3. Dismissal With Prejudice 8 As noted above, prior to the transfer of this action to this Court, the Western District of 9 Texas court previously dismissed similar allegations as to willfulness and indirect infringement in 10 the original complaint without prejudice and granted leave to amend, resulting in the FAC now at 11 issue. Dkt. No. 18. LED Wafer elected to forgo seeking leave to amend its complaint further. 12 Dkt. No. 276 at 1-2 (“LED Wafer states that it does not intend to move to amend its operative 13 complaint in this Action and will proceed with the First Amended Complaint (Dkt. 172) as the 14 operative complaint.”). Accordingly, based on the factually deficient allegations relating to 15 knowledge as well as LED Wafer’s waiver of further amendment of the claims, the Court finds 16 that the claims of willful, induced, and contributory infringement asserted here must all face 17 dismissal with prejudice and without further leave to amend. 18 B. LED Wafer’s Motion to Dismiss Under Rule 41 19 LED Wafer moves to dismiss the case, and it generally requests dismissal of its claims (as 20 well as Samsung’s counterclaims) without prejudice. See Dkt. No. 301. In this case, Defendants 21 have already filed answers, and no party disputes that Federal Rule of Civil Procedure 41(a)(2) 22 guides the resolution of LED Wafer’s motion for voluntary dismissal. Rule 41(a)(2) states that 23 “an action may be dismissed at the plaintiff’s request only by court order, on terms that the court 24 considers proper.” The decision to grant a voluntary dismissal under Rule 41(a)(2) falls within the 25 district court’s discretion and “will not be disturbed unless the court has abused its discretion.” 26 Westlands Water Dist. v. United States, 100 F.3d 94, 97 (9th Cir. 1996). Generally, “[a] district 27 court should grant a motion for voluntary dismissal under Rule 41(a)(2) unless a defendant can 1 975 (9th Cir. 2001) (citations omitted). “[L]egal prejudice does not result merely because the 2 defendant will be inconvenienced by having to defend in another forum or where a plaintiff would 3 gain a tactical advantage by that dismissal. Id. at 976. Rather, legal prejudice is “prejudice to 4 some legal interest, some legal claim, some legal argument. Uncertainty because a dispute 5 remains unresolved is not legal prejudice.” Westlands Water Dist., 100 F.3d at 97. 6 Defendants jointly oppose LED Wafer’s motion for voluntary dismissal under Rule 7 41(a)(2), broadly arguing that they will suffer prejudice if this action is dismissed, particularly in 8 relation to Samsung’s counterclaims seeking declarations of non-infringement. See Dkt. No. 312. 9 1. Legal Prejudice as to Patent Claims 10 The primary focus of a plaintiff’s request for dismissal under Rule 41(a)(2) centers on 11 whether the defendant would suffer legal prejudice as a result of the dismissal. Smith, 263 F.3d at 12 975; Stevedoring Servs. of Am. v. Armilla Int’l B.V., 889 F.2d 919, 921 (9th Cir. 1989). 13 Importantly, mere threat of future litigation, without more, does not constitute legal prejudice. 14 Westlands Water Dist., 100 F.3d at 97. Relatedly, “the expense incurred in defending against a 15 lawsuit does not amount to legal prejudice.” Id. 16 Defendants advance that they would suffer three forms of prejudice if the Court granted 17 dismissal in this case: (1) that it would force the parties to relitigate Defendants’ earlier, successful 18 effort to transfer the case to this District from the Western District of Texas; (2) that dismissal 19 would expose Defendants to “reimagined willful and indirect infringement claims” (Dkt. No. 312 20 at 30); and (3) Defendants would have to start over litigation in Eastern District of Texas despite 21 all the discovery and effort put into this case in this forum. Dkt. No. 312 at 29-32. All of these 22 arguments fall short of demonstrating legal prejudice of the sort necessary to reject LED Wafer’s 23 voluntary dismissal. 24 At the outset, it must be reiterated that the Eastern District of Texas case is legally and 25 formally a separate case from this case as the two actions involve separate allegations of patent 26 infringement that, while premised on some of the same operative patents, implicate distinct claims 27 of the patents based on different infringing products. See Fresenius USA, Inc. v. Baxter Int’l, Inc., 1 Defendants’ arguments regarding the prejudice they may suffer if this case is dismissed. 2 First, dismissal of the action here by no means would compel Defendants to “relitigate” 3 transfer. Because the two cases stand apart, Defendants’ actions in the newly-filed Eastern 4 District of Texas case would not “redo” anything that has already been accomplished here. But 5 further, and perhaps more clearly, the parties have already thoroughly and completely briefed 6 Defendants’ pending motion to change venue in the Eastern District of Texas case, meaning that 7 denying dismissal of the case here would not prevent any prejudice already suffered in litigating 8 the issue. 9 Second, granting LED Wafer’s request for voluntary dismissal here would not reopen the 10 door for it to assert willful and indirect infringement claims. The Court above dismissed those 11 theories of infringement with prejudice based on LED Wafer’s failure to demonstrate Defendants’ 12 knowledge of then-existing patents. 13 Third and finally, Defendants’ lamentations that they are prejudiced at continuing to 14 litigate in Eastern District of Texas because they have expended so many resources litigating in 15 this forum simply fails to establish prejudice. This case was stayed in this forum for years while 16 the parties litigated the patent claims before the Patent Trial and Appeal Board, and this case 17 remains at the pleading stage. But further, “plain legal prejudice does not result merely because 18 the defendant will be inconvenienced by having to defend in another forum[.]” Smith, 263 F.3d at 19 976. And “the expense incurred in defending against a lawsuit does not amount to legal 20 prejudice.” Westlands Water Dist., 100 F.3d at 97. Defendants fail to show legal prejudice that 21 would result from the dismissal of the remaining patent cause of action with prejudice. 22 Here, given the posture of this case, Defendants have not offered nor can the Court identify 23 any specific legal prejudice Defendants would suffer from voluntary dismissal. See Stevedoring, 24 889 F.2d at 921. Further, granting voluntary dismissal conserves judicial resources and is in the 25 interest of judicial economy. The Court will accordingly grant LED Wafer’s request to voluntarily 26 dismiss the causes of action for infringement of the ’405 patent and ’822 patent as well as LED 27 Wafer’s request to voluntarily dismiss the cause of action for infringement of the ’137 patent with 1 2. Discretionary Dismissal of Declaratory Counterclaims 2 For Samsung’s counterclaims seeking declarations of non-infringement as to the asserted 3 patents, the Court may decline to exercise discretion because “the Declaratory Judgment Act 4 provides that a court ‘may declare the rights and other legal relations of any interested party,’ not 5 that it must do so.” MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 136 (2007) (quoting 28 6 U.S.C. § 2201(a)). The Declaratory Judgment Act “confer[s] on federal courts unique and 7 substantial discretion in deciding whether to declare the rights of litigants.” Wilton v. Seven Falls 8 Co., 515 U.S. 277, 286 (1995). In exercising this discretion, courts consider “whether resolving 9 the case serves the objectives for which the Declaratory Judgment Act was created.” Cat Tech 10 LLC v. TubeMaster, Inc., 528 F.3d 871, 883 (Fed. Cir. 2008). These objectives include “clarifying 11 and settling the legal relations in issue,” and affording relief from “uncertainty, insecurity, and 12 controversy[.]” Capo, Inc. v. Dioptics Med. Prods., Inc., 387 F.3d 1352, 1357 (Fed. Cir. 2004) 13 (quoting Edwin Borchard, Declaratory Judgments 299 (2d ed. 1941)). 14 In this case, maintaining jurisdiction over the declaratory judgment counterclaims 15 generally would not promote the objectives of the Declaratory Judgment Act. Defendants’ 16 insistence that the issues in this case remain live for adjudication remain linked to their insistence 17 that the case should remain in this forum, see Dkt. No. 312 at 19-20, but Defendants do not 18 identify any uncertainty, insecurity, or controversy lingering for this Court to resolve. In this case, 19 Samsung’s counterclaims regarding the ’405 patent and ’822 patent serve no useful purpose in 20 light of the changes to the patents following reexamination. See Fresenius, 721 F.3d at 1340. 21 And Samsung’s counterclaim regarding the ’137 patent serves no useful purpose because LED 22 Wafer seeks to dismiss the sole non-moot cause of action with prejudice as to the period preceding 23 this action. Samsung’s counterclaims for non-infringement need not serve as a procedural 24 safeguard to protect Defendants from a future suit alleging infringement of the asserted patents 25 where LED Wafer would be precluded from refiling on the same allegations of infringement 26 dismissed by this order. Accordingly, the Court declines to exercise jurisdiction over Samsung’s 27 counterclaims seeking a declaration of non-infringement, and it dismisses the counterclaims as 1 well. BuzzBallz, LLC v. MPL Brands NV, Inc., No. 24-cv-04004-EKL, 2025 WL 2052301, at *5 2 |} (N.D. Cal. July 22, 2025). 3 || I. CONCLUSION 4 For the foregoing reasons, the Court GRANTS Samsung’s and Seoul Semiconductor’s 5 || respective partial motions to dismiss. The Court DISMISSES LED Wafer’s claims of willful 6 || infringement as to the ’137 patent, the °405 patent, and °822 patent against Samsung and Seoul 7 Semiconductor, with prejudice and without leave to amend. The Court DISMISSES LED 8 || Wafer’s claims of induced infringement and contributory infringement as to the ’137 patent, the 9 patent, and ’822 patent against Samsung and Seoul Semiconductor, with prejudice and 10 || without leave to amend. 11 The Court GRANTS LED Wafer’s voluntary motion to dismiss. Given the lack of legal 12 || prejudice to Defendants, the Court DISMISSES LED Wafer’s remaining claims on the □□□□ 13 || patent and °822 patent without prejudice in accordance with LED Wafer’s voluntary dismissal. 14 || Also in accordance with LED Wafer’s voluntary dismissal, all claims on the ’137 patent are 3 15 dismissed with prejudice to re-filing against Samsung on currently released products. The Court a 16 || declines to exercise jurisdiction over Samsung’s counterclaims for declaratory relief arising from 17 || the same patents and DISMISSES the counterclaims as well. Zz 18 The Clerk of Court shall close the case. 19 IT IS SO ORDERED. 20 Dated: June 16, 2026 21 Wed □□ / □ 22 wh: ARACELI MARTINEZ-OLGUIN 23 United States District Judge 24 25 26 27 28