Samsung Electronics Co, Ltd. v. CM HK, Ltd.

CourtDistrict Court, N.D. California
DecidedMay 15, 2025
Docket4:24-cv-06567
StatusUnknown

This text of Samsung Electronics Co, Ltd. v. CM HK, Ltd. (Samsung Electronics Co, Ltd. v. CM HK, Ltd.) is published on Counsel Stack Legal Research, covering District Court, N.D. California primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Samsung Electronics Co, Ltd. v. CM HK, Ltd., (N.D. Cal. 2025).

Opinion

1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 7 SAMSUNG ELECTRONICS CO, LTD., et Case No. 24-cv-06567-JST al., 8 Plaintiffs, ORDER GRANTING DEFENDANT CM 9 HK, LTD.'S MOTION TO DISMISS v. 10 Re: ECF No. 51 CM HK, LTD., 11 Defendant.

12 13 Pending before the Court is Defendant’s motion to dismiss. ECF No. 51. The Court will 14 grant the motion. 15 I. BACKGROUND 16 This case is one of many patent infringement disputes between Plaintiffs Samsung 17 Electronics Co., Ltd. (“SEC”) and Samsung Electronics America, Inc. (“SEA”) (collectively, 18 “Samsung”), Defendant CM HK, Ltd. (“CM HK”), and non-party CyWee Group Ltd. 19 (“CyWee”).1 SEC is a Korean corporation with its principal place of business in Korea; SEA is a 20 New York corporation with its principal place of business in New Jersey; CM HK is a Chinese 21 corporation with its principal place of business in Hong Kong; and CyWee is a British Virgin 22 Islands corporation with its principal place of business in Taipei. ECF No. 24 (“Compl”) ¶¶ 5–8. 23 In February 2017, CyWee filed suit against Samsung in the Eastern District of Texas, Case 24 No. 2:17-cv-00140-RSW-RSP (the “2017 CyWee Action”), accusing Samsung of infringing U.S. 25 Patent Nos. 8,441,438 (the “’438 Patent”) and 8,552,978 (the “’978 Patent”). Compl. ¶ 21. 26 CyWee also asserted the ’438 and ’978 Patents against Apple in this District, Case No. 4:14-cv- 27 1 01853, and against LGE and ZTE in the Southern District of California, Case Nos. 3:17-cv-01102, 2 3:17-cv-02130. Id. ¶¶ 14–16. In June 2018, Google filed petitions for inter partes review of the 3 ’438 and ’978 Patents, which Samsung joined. Id. ¶ 22. The Patent Trial and Appeal Board 4 (“PTAB”) instituted the petitions in December 2018 and ultimately invalidated the challenged 5 claims. Id. In January 2024, the Federal Circuit affirmed the PTAB’s decisions. Id.; see also 6 CyWee Grp. Ltd. v. ZTE (USA), Inc., 90 F.4th 1358 (Fed. Cir. 2024). 7 In April 2024, “CyWee contacted Samsung to ask if Samsung would agree to a non-suit 8 with prejudice of all claims and counterclaims with each side bearing their costs and fees, stating 9 that CyWee had been ‘financially decimated’ by the [2017 CyWee Action].” Compl. ¶ 23; see 10 also ECF No. 58-2. That same month, “Defendants’ counsel emailed counsel for Samsung 11 offering a covenant not to sue on all of CyWee’s U.S. patents.” Compl. ¶ 25; see also ECF No. 12 58-3. 13 In May 2024, “Defendants’ counsel reiterated that CyWee would be unable to pay any fees 14 to Samsung [from the 2017 CyWee Action].” Compl. ¶ 28. Later that month, “Defendants’ 15 counsel claimed via email that CM HK owns all CyWee patents other than the patents in the [2017 16 CyWee Action].” Id.; see also ECF No. 58-4 at 3. Defendants’ counsel also “proposed a license 17 to Defendants’ patent portfolio and sent a list of 82 patents and applications that either Defendants 18 or its affiliates own worldwide.” Compl. ¶ 28. 19 In June 2024, “the parties held a telephonic conference where Defendants’ counsel 20 represented that CM HK might transfer the patents back to CyWee for assertion in the U.S.” Id. 21 ¶ 30. 22 “On July 25, 2024, Defendants’ counsel informed Samsung via email that CyWee had 23 identified two patents they believed to be infringed by Samsung, both having been prosecuted with 24 art from the IPRs.” Id. ¶ 32; see also ECF No. 58-6 at 3. “In that same email[,] Defendants’ 25 counsel stated that claim charts and other due diligence would be completed ‘soon’ and once again 26 noted an intention to ask the court in the [2017 CyWee Action] to grant a motion to amend the 27 complaint to add those two patents.” Compl. ¶ 32; see also ECF No. 58-6 at 3. Four days later, 1 patents w[]ere those that issued after the IPRs, and all included the disclosure of the IPR prior art.” 2 Compl. ¶ 33; see also ECF No. 58-6 at 2. CyWee stated that it “would be able to present claim 3 charts at the meeting and that “if Samsung refused to meet, [] CyWee would file suit on these 4 patents or seek to amend the current suit in the Eastern District of Texas.” Compl. ¶ 33; see also 5 ECF No. 58-6 at 2. 6 On July 31, 2024, Samsung filed a motion to dismiss the 2017 CyWee Action “in light of 7 the PTAB holding all asserted claims [of the ’438 and ’978 Patents] unpatentable with the Federal 8 Circuit affirming the decisions.” Compl. ¶ 35. “That same day, Defendants’ counsel sent an 9 email to counsel for Samsung simply stating ‘OK. Declaration of War accepted.’” Id.2 10 “On August 2, 2024, Defendants’ counsel requested a meet and confer stating that there 11 were eight patents to be asserted against Samsung.” Compl. ¶ 36; see also ECF No. 58-6 at 2. 12 “On August 13, 2024, Defendants’ counsel and Samsung’s counsel met via telephone conference” 13 and “Defendants’ counsel stated that CM HK would not transfer patents back to CyWee.” Compl. 14 ¶ 37. Defendants’ counsel also stated that CM HK “was planning to file a new lawsuit based on 15 recently filed patents” and that “CM HK’s representative Mr. Shey was available to meet with 16 Samsung to discuss a license.” Id. 17 “On September 5, 2024, Defendants’ counsel sent an email to counsel for Samsung once 18 again asking if [Samsung] would accept service of CM HK’s complaint, which [CM HK] claimed 19 was ‘ready to file.’” Id. ¶ 41. “On September 10, 2024, Defendants’ counsel sent an email 20 regarding negotiations for the bill of costs in the [2017 CyWee Action]” stating “that CyWee 21 opposed but offered to ‘carry’ $25,000 of costs to be payable upon conclusion of the CM HK 22 lawsuit.” Id. ¶ 42. The email “once again asked Samsung to accept service of the new lawsuit 23 . . . .” Id. 24 “On September 11, 2024, Defendants’ counsel further confirmed that the owners of 25 CyWee (on information and belief, Softbank China) own approximately 40% of CM HK and 26 reiterated that CM HK planned to assert patents that issued after the IPRs, which cited the IPR art 27 1 and opinions . . . .” Id. ¶ 43. 2 On September 18, 2024, Samsung filed suit against CM HK and CyWee, seeking 3 declaratory judgment of non-infringement of U.S. Patent Nos. 10,275,038 (the “’038 Patent”), 4 10,817,072 (the “’072 Patent”), 10,852,846 (the “’846 Patent”), and 11,698,687 (the “’687 5 Patent”) (collectively, the “Asserted Patents”). ECF No. 1. The Asserted Patents are in the same 6 patent family as the previously asserted ’438 and ’978 Patents. Compl. ¶ 15. 7 On October 31, 2024, CM HK filed suit against Samsung in the Eastern District of Texas, 8 accusing Samsung of infringing the ’846 and ’687 Patents. ECF No. 50 ¶ 1. 9 On January 28, 2025, CM HK and CyWee moved to dismiss Samsung’s complaint. ECF 10 Nos. 51, 52. On February 20, 2025, Samsung filed a notice of voluntary dismissal as to CyWee 11 based on representations made in CyWee’s reply brief regarding CyWee’s rights to the Asserted 12 Patents. ECF No. 64 at 2. 13 II. LEGAL STANDARD 14 A. Rule 12(b)(1) 15 A motion to dismiss under Rule 12(b)(1) tests the subject matter jurisdiction of the court. 16 See Fed. R. Civ. P. 12(b)(1). If a plaintiff lacks Article III standing to bring a suit, the federal 17 court lacks subject matter jurisdiction, and the suit must be dismissed under Rule 12(b)(1). 18 Cetacean Cmty. v. Bush, 386 F.3d 1169, 1174 (9th Cir. 2004). “A Rule 12(b)(1) jurisdictional 19 attack may be facial or factual. In a facial attack, the challenger asserts that the allegations 20 contained in a complaint are insufficient on their face to invoke federal jurisdiction. By contrast, 21 in a factual attack, the challenger disputes the truth of the allegations that, by themselves, would 22 otherwise invoke federal jurisdiction.” Safe Air for Everyone v.

Free access — add to your briefcase to read the full text and ask questions with AI

Related

Aetna Life Insurance v. Haworth
300 U.S. 227 (Supreme Court, 1937)
International Shoe Co. v. Washington
326 U.S. 310 (Supreme Court, 1945)
Bell Atlantic Corp. v. Twombly
550 U.S. 544 (Supreme Court, 2007)
MedImmune, Inc. v. Genentech, Inc.
549 U.S. 118 (Supreme Court, 2007)
Ashcroft v. Iqbal
556 U.S. 662 (Supreme Court, 2009)
Avocent Huntsville Corp. v. Aten Intern. Co., Ltd.
552 F.3d 1324 (Federal Circuit, 2008)
Goodyear Dunlop Tires Operations, S. A. v. Brown
131 S. Ct. 2846 (Supreme Court, 2011)
United States v. Arnold F. Hohn
8 F.3d 1301 (Eighth Circuit, 1993)
Don Laub Debbie Jacobsen Ted Sheely California Farm Bureau Federation v. United States Department of the Interior Gale A. Norton, Secretary, Department of the Interior United States Environmental Protection Agency Marianne Horinko, in Her Official Capacity as Acting Administrator of the U.S. Epa Department of the Army, (Civil Works) Joseph W. Westphal, Dr., in His Official Capacity as Assistant Secretary of the Army (Civil Works) Donald Evans, in His Official Capacity as Secretary, U.S. Department of Commerce United States Department of Commerce U.S. Department of Agriculture Ann M. Veneman, in Her Official Capacity as Secretary, U.S. Department of Agriculture U.S. Army Corps of Engineers Peter T. Madsen, Brigadier General, in His Official Capacity as Commander, South Pacific Division, U.S. Army Corps of Engineers Natural Resources Conservation Service Charles Bell, in His Capacity as California State Conservationist, U.S. Department of Agriculture, Natural Resources Conservation Service National Marine Fisheries Service Rebecca Lent, Dr., Regional Administrator, National Marine Fisheries Service U.S. Fish & Wildlife Service Stephen Thompson, in His Official Capacity as Manager of California-Nevada Operations of the U.S. Fish & Wildlife Service United States Bureau of Reclamation Kirk C. Rodgers, in His Official Capacity as Director, Mid-Pacific Region of the U.S. Bureau of Reclamation Gray Davis, Governor of the State of California California Resources Agency Mary D. Nichols, in Her Official Capacity as Secretary of the California Resources Agency California Environmental Protection Agency Winston Hickox, in His Official Capacity as Secretary of the California Environmental Protection Agency
342 F.3d 1080 (Ninth Circuit, 2003)
Mendiondo v. Centinela Hospital Medical Center
521 F.3d 1097 (Ninth Circuit, 2008)
In Re Gilead Sciences Securities Litigation
536 F.3d 1049 (Ninth Circuit, 2008)
Boschetto v. Hansing
539 F.3d 1011 (Ninth Circuit, 2008)
Intersearch Worldwide, Ltd. v. Intersearch Group, Inc.
544 F. Supp. 2d 949 (N.D. California, 2008)
Daimler AG v. Bauman
134 S. Ct. 746 (Supreme Court, 2014)
Abbas v. Foreign Policy Group, LLC
975 F. Supp. 2d 1 (District of Columbia, 2013)
Loredana Ranza v. Nike, Inc.
793 F.3d 1059 (Ninth Circuit, 2015)

Cite This Page — Counsel Stack

Bluebook (online)
Samsung Electronics Co, Ltd. v. CM HK, Ltd., Counsel Stack Legal Research, https://law.counselstack.com/opinion/samsung-electronics-co-ltd-v-cm-hk-ltd-cand-2025.