Case 3:20-cv-01676-BEN-DEB Document 20 Filed 04/12/21 PageID.512 Page 1 of 27
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`UNITED STATES DISTRICT COURT
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`SOUTHERN DISTRICT OF CALIFORNIA
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`PULSE ELECTRONICS, INC., a
`Delaware corporation,
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`Plaintiff,
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`v.
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`U.D. ELECTRONIC CORP., a Taiwan
`corporation,
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`Defendant.
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`I.
`
`INTRODUCTION
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`Case No.: 3:20-cv-01676-BEN-DEB
`Related Case: 3:18-cv-00373-BEN-
`MSB
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`ORDER GRANTING DEFENDANT’S
`MOTION TO DISMISS
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`[ECF Nos. 13, 16, 18]
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`Plaintiff PULSE ELECTRONICS, INC., a Delaware corporation (“Plaintiff” or
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`“Pulse”) brings this action for patent infringement against Defendant U.D. Electronic
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`Corp., a Taiwan corporation (“Defendant” or “UDE”). Complaint, ECF No. 1 (“Compl.”).
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`Before the Court is Defendant’s Motion to Dismiss Pursuant to Rule 12(b)(1) of the
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`Federal Rules of Civil Procedure (the “Motion”). ECF No. 13. The Motion was submitted
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`on the papers without oral argument pursuant to Civil Local Rule 7.1(d)(1) and Rule 78(b)
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`of the Federal Rules of Civil Procedure (“FRCP”). ECF No. 19.
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`After considering the papers submitted, supporting documentation, and applicable
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`law, the Court GRANTS Plaintiff’s Motion to Dismiss without prejudice.
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`/ / /
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`3:20-cv-01676-BEN-DEB
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`Case 3:20-cv-01676-BEN-DEB Document 20 Filed 04/12/21 PageID.513 Page 2 of 27
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`II. BACKGROUND
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`This case is one of several lawsuits in which Plaintiff accuses Defendant of
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`infringing on the claims of various patents it owns.
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`A.
`Statement of Facts
`The accused products in this case relate to RJ-45 Integrated Connector Modules
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`(“ICMs”)1 that connect electronic devices across local area networks (“LANs”). Compl.
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`at 32:6-13.
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`Founded in 1947, Plaintiff designs and manufactures electronic components,
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`including RJ-45 ICMs, which are intended for use with electronics. Compl. at 3:6-10.
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`Plaintiff maintains its headquarters in San Diego, California, id. at 2:5-7, but its
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`“engineering design centers and manufacturing facilities supply products to a broad
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`international customer base,” id. at 3:9-10. Plaintiff owns more than 100 United States and
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`international patents dealing with RJ-45 ICM technology, id. at 3:23-25, one of which is at
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`issue in this case and covers various methods for limiting electromagnetic interference
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`(“EMI”), or the disruption of the operation of an electronic product due to electromagnetic
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`waves. Pulse I, 2021 WL 981123, at *2. On August 10, 2004, the United States Patent
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`and Trademark Office (the “USPTO”) issued the relevant patent in suit pertaining to this
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`case, United States Patent Number 6,773,302 (the “302 Patent”):
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`1
`A detailed description of the ICMs at issue in this patent dispute is provided in the
`Court’s order on the parties’ cross-motions for summary judgment in the related case to
`this matter: Pulse Electronics, Inc. v. U.D. Electronics Corp., Case No. 3:18-cv-00373-
`BEN-MSB, 2021 WL 981123, *1 (S.D. Cal. Mar. 16, 2021) (“Pulse I”). The Court takes
`judicial notice of the record in Pulse I. See FED. R. EVID. 201(b)(1)-(2) (providing that at
`any stage of a proceeding, courts may take judicial notice of (1) facts not subject to
`reasonable dispute and “generally known within the trial court’s territorial jurisdiction”
`and (2) adjudicative facts, which “can be accurately and readily determined from sources
`whose accuracy cannot reasonably be questioned”); see also Rand v. Rowland, 154 F.3d
`952, 961 (9th Cir. 1998) (noting that a district court may take judicial notice “of its own
`records, either at the behest of the defendant or sua sponte”).
`2
`Unless otherwise indicated, all page number references are to the ECF-generated
`page number contained in the header of each ECF-filed document.
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`-2-
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`3:20-cv-01676-BEN-DEB
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`Case 3:20-cv-01676-BEN-DEB Document 20 Filed 04/12/21 PageID.514 Page 3 of 27
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`Patent No.
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`Title
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`Description
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`Issue
`Date
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`Expiration
`Date
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`6,773,302
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`An advanced modular plug connector
`Advanced
`assembly incorporating a substrate
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`Microelectronic disposed in the rear portion of the
`Connector
`connector housing, the substrate
`Assembly and
`adapted to receive one or more
`Method of
`electronic components such as choke
`Manufacturing
`coils, transformers, or other signal
`conditioning elements or magnetics.
`Reply at 9:27-28; see also Exhibit “A” to Complaint, ECF No. 1-3 at 2.
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`August 10,
`2004
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`March 28,
`20223
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`Founded in 2005, Defendant is a Taiwan corporation that manufactures and supplies
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`communications equipment, including RJ-45 ICMs, for integration into computer
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`networking devices overseas. Compl. at 2:8-10, 3:26-27. Defendant is headquartered in
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`Taoyuan City, Taiwan and operates two factories in Guandong and Sichuan, China. See
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`Exhibit “M” to Compl., ECF No. 1-15 at 4.
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`
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`Plaintiff alleges that “Defendant makes, uses, offers to sell, sells and/or imports into
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`the United States products that infringe” on the 302 Patent, including, but not limited to,
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`the following Accused Products:
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`Accused Products:
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`Series:
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`Claims Infringed:
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`1G multi-port ICM products
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`M1, M4, M6, MC, N1, N6, N8,
`RM, and RN series 1G devices
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`“Multi-Gigabyte” (e.g., 2.5G/5G)
`single- and multi-port ICM products
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`GM2, GM4, and GM6 series
`2.5G devices
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`18
`19
`22
`23
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`3
`“[A] patent typically expires 20 years from the day the application for it was filed.
`Kimble v. Marvel Ent., LLC, 576 U.S. 446, 451 (2015) (citing 35 U.S.C. § 154(a)(2)
`(providing that a patent “grant shall be for a term beginning on the date on which the patent
`issues and ending 20 years from the date on which the application for the patent was filed
`in the United States”)). “[W]hen the patent expires, . . . the right to make or use the article,
`free from all restriction, passes to the public.” Id. In this case, Pulse Engineering, Inc.
`applied for the 302 Patent on March 14, 2002, meaning it would expire on March 14, 2022.
`See ECF No. 1-3 at 2. However, the 302 Patent also notes that “[s]ubject to any disclaimer,
`the term of this patent is extended or adjusted under 35 U.S.C. 154(b) by 14 days.” See
`id.; see also 35 U.S.C. § 154(b). Thus, the 302 Patent would expire fourteen (14) days
`after the original expiration date, or on March 28, 2022. See also Reply at 9:27-28.
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`-3-
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`Case 3:20-cv-01676-BEN-DEB Document 20 Filed 04/12/21 PageID.515 Page 4 of 27
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`See Compl. at 5:5-11, 8:13-18.
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`Plaintiff alleges Defendant directly infringes, in violation of 35 U.S.C. § 271(a), “by
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`making, using, offering to sell, selling, and/or importing into the United States, without
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`authority, Accused Products that infringe at least claims 18, 19, 22 and 23 of the ’302
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`Patent.” Compl. at 8:13-17. Plaintiff also alleges that Defendant has induced infringement
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`of the 302 Patent in violation of 35 U.S.C § 271(b), “by actively inducing related entities,
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`retailers, and/or customers to make, use, sell, offer to sell, and/or import, products covered
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`by one or more claims of the ’302 patent.” Id. at 18:1-4. Finally, Plaintiff also argues that
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`Defendant commits contributory infringement of the 302 Patent, in violation of 35 U.S.C.
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`§ 271(c), by performing the below acts:
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`offering to sell or selling within the United States and/or
`importing into the United States, without authorization, one or
`more components or products of which the ’302 Patent covers
`with the knowledge (at least as of October 14, 2016 or the filing
`of the Original Complaint in Case No. 3:18-CV-00373 filed on
`February 16, 2018) that such component(s) are especially made
`or especially adapted for use in infringement of the ’302 Patent
`and are not are staple articles of commerce suitable for
`substantial non-infringing use.
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`Compl. at 30:13-22.
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`Finally, Plaintiff also alleges that “the Accused Products underwent an extensive
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`sales cycle that involved Defendant’s substantial U.S.-based use of the Accused Devices.”
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`Compl. at 5:12-22. Plaintiff pleads that “[b]ut for this U.S.-based infringing activity by
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`Defendant, such design wins would not have been achieved, and Defendant would not have
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`benefited from the resulting sales and associated revenue and profit.” Id.
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`B.
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`Procedural History
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`1.
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`Pulse I4
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`On February 16, 2018, Plaintiff first asserted the 302 Patent against Defendant in
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`4
`All “ECF No.” references in Section II(B)(1) only are to the docket in Pulse I rather
`than the docket in this case.
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`-4-
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`3:20-cv-01676-BEN-DEB
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`Pulse I, where it initially accused Defendant of infringing on four patents: U.S. Patent No.
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`(1) 7,959,473 (the “473 Patent”), (2) 9,178,318 (the “318 Patent”), (3) 6,593,840 (the “840
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`Patent”), and (4) the 302 Patent. See ECF. No. 25-1 ¶ 14; see also Compl. at 4:8-11. On
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`June 11, 2018, UDE filed its Answer along with eight counterclaims for non-infringement
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`and invalidity of the 302, 473, 318, and 840 Patents. ECF. No. 13.
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`On January 17, 2020, Plaintiff filed a First Amended Complaint. ECF No. 61.
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`However, on July 6, 2020, the Court granted Defendant’s motion to dismiss the FAC
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`without prejudice and granted leave to amend. Order, ECF No. 100. The Court found
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`Plaintiff did not allege sufficient facts to establish a plausible claim for relief under the
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`Twombly/Iqbal standard as to both induced and contributory infringement. Id. at 4-5.
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`On December 17, 2018, the Court granted Defendant’s motion to stay Pulse I,
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`pending inter partes review (“IPR”) of all four patents-in-suit. Order, ECF No. 28 at 6-7.
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`Later that month, the Patent Trial and Appeal Board (“PTAB”) granted IPR of the 302
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`Patent. ECF No. 45 at 4:20-28. As such, on February 14, 2020, this Court granted a joint
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`motion for dismissal of the claims related to the 302 Patent without prejudice. ECF No.
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`72. As to the other patents, however, the PTAB denied institution of a trial. ECF No. 46
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`at 5:23-27. Thus, on November 18, 2019, this Court granted Plaintiff’s Motion to Lift the
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`Stay as to the remaining patents-in-suit, which had been in place during the IPR. Order,
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`ECF No. 52.
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`On July 16, 2020, Plaintiff filed a Second Amended Complaint, which became the
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`operative complaint and alleged three claims for relief for direct, induced, and contributory
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`infringement of the 473, 318, and 840 Patents. SAC. Shortly thereafter, on July 30, 2020,
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`the Court issued its Claim Construction Order. ECF No. 107.
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`On March 15, 2021, the Court in Pulse I denied Plaintiff’s motion for summary
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`judgment, granted-in-part Defendant’s motion for summary judgment, and ordered
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`Plaintiff to show cause as to why summary judgment should not be granted in Defendant’s
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`favor by coming forward with evidence of infringing acts within the United States. See
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`ECF No. 160. Two weeks later, on March 31, 2021, the Court dismissed the remaining
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`Case 3:20-cv-01676-BEN-DEB Document 20 Filed 04/12/21 PageID.517 Page 6 of 27
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`claims and granted summary judgment in Defendant’s favor because Plaintiff had failed to
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`submit evidence of Defendant’s infringing activities within the United States. Pulse Elecs.,
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`Inc. v. U.D. Elec. Corp., No. 318CV00373BENMSB, --- F. Supp. 3d ----, 2021 WL
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`1226470, at *1 (S.D. Cal. Mar. 31, 2021).
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`2.
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`USPTO/PTAB
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`On July 24, 2019, in the midst of Pulse I, the PTAB instituted IPR of the 302 Patent.
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`Defendant’s Motion to Dismiss, ECF No. 13 (“Mot.”) at 5:26-27.
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`On July 22, 2020, the PTAB issued a final written decision finding claims 1, 3-9,
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`and 11-16 unpatentable. Mot. at 6:3-4 (citing Exhibit “B” to Compl., ECF No. 1-4 at 3).
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`However, during the IPR, Plaintiff submitted new claims 17-23 for addition to the 302
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`Patent in the event the PTAB found the original claims unpatentable. Id. at 6:5-7. In the
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`Final Written Decision, the PTAB determined that some of the new claims (e.g., claims 18,
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`19, 22, and 23) were patentable. Id. at 6:7-8 (citing Exhibit “B” to Compl., ECF No. 1-4
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`at 46); see also Opposition, ECF No. 16 (“Oppo.”) at 2:12-15.
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`On August 6, 2020, Plaintiff filed an appeal challenging the decision fining the
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`original claims of the 302 Patent unpatentable. See Pulse Electronics, Inv. v. U.D.
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`Electronic Corp., United States Court of Appeals for the Federal Circuit Case No. 20-2129
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`(Fed. Cir. Aug., 6, 2020), ECF No. 1. Meanwhile, on August 20, 2020, Defendant filed a
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`cross-appeal, challenging the PTAB’s holding that claims 22 and 23 were patentable. See
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`U.D. Electronic Corp. v. Pulse Electronics, Inc., United States Court of Appeals for the
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`Federal Circuit Case No. 20-2177 (Fed. Cir. Aug., 20, 2020), ECF No. 1. Defendant did
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`not, however, challenge the PTAB’s finding that amended claims 18 and 19 were
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`patentable. See id.; see also Oppo. at 2:18-22. The Federal Circuit later consolidated the
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`two appeals, and the parties remain in the briefing stage of the appeal. Mot. at 6:14-15.
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`3.
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`Pulse II
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`On August 27, 2020, before the Certificate had issued on the PTAB’s IPR and while
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`the cross-appeals of the PTAB’s Final Written Decision were still pending, Plaintiff filed
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`its complaint in this case, alleging infringement of amended claims 18, 19, 22, and 23 of
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`the 302 Patent. Oppo. at 2:16-17; see also Compl.
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`On September 22, 2020, Defendant was served with the complaint, meaning
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`Defendant’s deadline to respond to the complaint was October 13, 2020. ECF No. 6; see
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`also FED. R. CIV. P. 12(a)(1)(A)(i). On October 13, 2020, however, the Parties filed a
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`Stipulation to Extend Time to Respond to the Complaint, seeking a ninety (90) day
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`extension of time to respond in light of the pending IPR regarding the 302 Patent, which
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`the Court granted on October 14, 2020. ECF No. 7 at 2; see also Order, ECF No. 8
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`(ordering that Defendant’s responsive pleading would be due by January 11, 2021).
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`On January 13, 2021,5 Defendant filed its Motion to Dismiss. See Mot.
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`On January 27, 2021, Plaintiff opposed Defendant’s Motion to Dismiss. Oppo. On
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`February 9, 2021, Defendant replied. Reply, ECF No. 18 (“Reply”).
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`III. LEGAL STANDARD
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`A defendant may seek dismissal of a claim or lawsuit by asserting the defense of
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`lack of subject matter jurisdiction. FED. R. CIV. P. 12(b)(1). If the Court, after review of
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`motion to dismiss brought pursuant to Rule 12(b)(1) of the FRCP (“Rule 12(b)(1)”), or at
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`any other time during a lawsuit, determines “that it lacks subject matter-jurisdiction, the
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`court must dismiss the action.” FED. R. CIV. P. 12(h)(3). “Dismissal for lack of subject
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`matter jurisdiction is appropriate if the complaint, considered in its entirety, on its face fails
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`to allege facts sufficient to establish subject matter jurisdiction.” In re Dynamic Random
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`Access Memory (DRAM) Antitrust Litig., 546 F.3d 981, 984-85 (9th Cir. 2008).
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`“Although the defendant is the moving party in a motion to dismiss brought under
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`
`5
`Defendant’s Motion appears to have been submitted after its deadline to respond for
`two reasons. First, extensions may only be secured by court approval even if both parties
`stipulate to an extension. S.D. Cal. Civ. R. 12.1. Thus, when the extension was not granted
`by the day Defendant’s responsive pleading was due (October 13, 2020), Defendant failed
`to timely respond. Assuming the Court’s Order granting the extension remedied the initial
`untimeliness, Defendant still failed to file its responsive pleading by the court-ordered
`deadline of January 11, 2021 by waiting until January 13, 2021 to file this Motion.
`Plaintiff, however, did not oppose Defendant’s Motion on this ground, and given the
`Court’s preference for deciding cases on the merits, it, nonetheless, considers the Motion.
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`Rule 12(b)(1), the plaintiff is the party invoking the court’s jurisdiction.” Brooke v. Kashl
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`Corp., 362 F. Supp. 3d 864, 871 (S.D. Cal. 2019). “As a result, the plaintiff bears the
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`burden of proving that the case is properly in federal court.” Id.; see also DRAM, 546 F.3d
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`at 984. To state a claim for relief invoking a federal court’s subject-matter jurisdiction, a
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`pleading must allege “a short and plain statement of the grounds for the court’s
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`jurisdiction.” FED. R. CIV. P. 8(a)(1). The allegations of subject matter jurisdiction must
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`plead facts, rather than mere legal conclusions, establishing a plausible basis for federal
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`subject matter jurisdiction. Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007); Ashcroft
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`v. Iqbal, 556 U.S. 662 (2009).
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`Where a defendant seeks dismissal of a case pursuant to FRCP 12(b)(1), the
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`“jurisdictional attack may be facial or factual.” Safe Air for Everyone v. Meyer, 373 F.3d
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`1035, 1039 (9th Cir. 2004). In a facial attack, the moving party asserts that, even assuming
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`the truth of the plaintiff’s allegations, “the allegations contained in a complaint are
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`insufficient on their face to invoke federal jurisdiction.” Safe Air, 373 F.3d at 1039. In a
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`factual attack, the moving party “disputes the truth of the allegations that, by themselves,
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`would otherwise invoke federal jurisdiction.” Id.
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`If a defendant advances “a factual attack on subject matter jurisdiction, the defendant
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`may introduce testimony, affidavits, or other evidence to dispute the truth of the allegations
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`that, by themselves, would otherwise invoke federal jurisdiction.” Terenkian v. Republic
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`of Iraq, 694 F.3d 1122, 1131 (9th Cir. 2012) (internal quotations omitted). “Under these
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`circumstances, ‘no presumptive truthfulness attaches to plaintiff’s allegations.’” Id. “Once
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`the moving party has converted the motion to dismiss into a factual motion by presenting
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`affidavits or other evidence properly brought before the court, the party opposing the
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`motion must furnish affidavits or other evidence necessary to satisfy its burden of
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`establishing subject matter jurisdiction.” Safe Air, 373 F.3d at 1039.
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`IV. DISCUSSION
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`Defendant argues that Plaintiff’s complaint must be dismissed because Plaintiff’s
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`entire lawsuit is premised on new claims being added to the 302 Patent, which have not yet
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`been added. Mot. at 5:5-10. As a result, until the new claims are added, Plaintiff has no
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`patent rights pertaining to the 302 Patent, and therefore, lacks standing to pursue its claims.
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`Id. at 5:13-16. Defendant correctly points out that, if a plaintiff lacks standing to pursue
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`the plaintiff’s claims, then, the Court also lacks subject-matter jurisdiction. Id.
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`Plaintiff responds by arguing that the Court should deny Defendant’s motion
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`“because: (i) Pulse possessed standing to bring the present suit because issuance of the
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`certificate is imminent for at least asserted amended claims 18 and 19 of the ’302 Patent;
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`(ii) the [Federal Circuit’s] decision will issue before substantial litigation begins; and (iii)
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`judicial economy will be served.” Oppo. at 2:4-6, 3:15-18. Alternatively, Plaintiff asks
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`the Court to “stay this litigation until the [Federal Circuit] decides the entire appeal of the
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`’302 Patent.” Id. at 3:19-20.
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`In its reply, Defendant argues that Plaintiff’s Opposition “does not counter, and
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`cannot counter, the single decisive fact in this case: asserted claims 18, 19, 22, and 23 are
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`not yet part of the ‘302 Patent.” Reply at 4:3-5. Defendant contends that the Court should
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`dismiss this case for three reasons: First, Plaintiff does not dispute “that it lacks the
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`touchstone requirement for standing: a right to exclude others.” Reply at 5:11-12. Second,
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`Plaintiff fails to show any concrete and particularized harm that is actual or imminent
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`because (a) Plaintiff miscalculates when the asserted claims will be added to the 302 Patent
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`(if ever), (b) the 302 Patent will likely expire before the asserted claims are added to it, and
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`(c) Plaintiff’s arguments about judicial economy fail as a matter of law. Reply at 6:3-4,
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`17-18, 8:18-19, 9:20-21. Third, Plaintiff’s request for a stay cannot resolve the standing
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`deficiency, especially because “[t]he present case will likely be permanently mooted before
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`it ever becomes ripe.” Id. at 4:26, 10:25-26.
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`As outlined below, the Court finds it appropriate to GRANT Defendant’s Motion to
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`Dismiss because the Court lacks subject-matter jurisdiction over this case. Lacking
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`subject-matter jurisdiction, the Court also DENIES Plaintiff’s improper request for a stay.
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`A. Defendant’s Motion to Dismiss for Lack of Jurisdiction
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`Plaintiff argues “this Court has original and exclusive subject matter jurisdiction
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`3:20-cv-01676-BEN-DEB
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`Case 3:20-cv-01676-BEN-DEB Document 20 Filed 04/12/21 PageID.521 Page 10 of 27
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`pursuant to 28 U.S.C. §§ 1331 and 1338(a).” Oppo. at 3:25-26; see also 28 U.S.C. §§ 1331
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`(vesting district courts with “original jurisdiction of all civil actions arising under the
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`Constitution, laws, or treaties of the United States”), 1338(a) (providing that “district courts
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`shall have original jurisdiction of any civil action arising under any Act of Congress
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`relating to patents”). While the present patent dispute falls within the purview of a civil
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`action arising under patent laws, Article III of the United States Constitution limits the
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`subject-matter jurisdiction of federal courts to justiciable “cases” and “controversies.” U.S.
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`CONST., ART. III, § 2. The United States Supreme Court has held that for a case to meet
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`the justiciability requirement, a plaintiff must show (1) standing; (2) that the case is ripe;
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`(3) the case is not moot; and (4) the case does not involve a political question. See, e.g.,
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`DaimlerChrysler Corp. v. Cuno, 547 U.S. 332, 335 (2006) (“The doctrines of mootness,
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`ripeness, and political question all originate in Article III’s ‘case’ or ‘controversy’
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`language, no less than standing does.”). Defendant asks the Court to dismiss this case
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`because (1) Plaintiff lacks standing; (2) the case is not ripe; and (3) by the time the case is
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`ripe, Plaintiff’s claims may be moot. Reply at 4:5-26. Plaintiff’s opposition boils down to
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`contending that it “has standing because the issuance of the certificate [and therefore,
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`standing] is imminent.” Oppo. at 4:14-15. Defendant responds that Plaintiff fails to show
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`any harm that is “concrete and particularized” and “actual or imminent” because (1) Pulse
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`miscalculates when the asserted claims will be added to the 302 Patent; (2) the 302 Patent
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`will likely expire before the asserted claims are added to it; and (3) Plaintiff’s arguments
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`about substantial litigation and judicial economy are misplaced. Reply at 6:3-4, 17-18,
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`8:18-19, 9:20-21.
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`The Court considers the jurisdictional issues first given a dismissal for lack of
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`jurisdiction renders all other claims moot. See Ruhrgas AG v. Marathon Oil Co., 526
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`U.S. 574, 583 (1999) (“Article III generally requires a federal court to satisfy itself of its
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`jurisdiction over the subject matter before it considers the merits of a case.”). As outlined
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`below, the Court determines it must dismiss Plaintiff’s claims because (1) Plaintiff lacks
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`-10-
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`3:20-cv-01676-BEN-DEB
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`constitutional standing,6 (2) Plaintiff’s claims at issue are not ripe; and (3) by the time the
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`claims become ripe, they will likely be moot.
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`1.
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`Plaintiff Lacks Constitutional Standing
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`When a defendant challenges a court’s subject matter jurisdiction pursuant to Rule
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`12(b)(1), the plaintiff bears the burden of establishing standing to sue. Ortho Pharm. Corp.
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`v. Genetics Inst., Inc., 52 F.3d 1026, 1032-33 (Fed. Cir. 1995). “A party must establish
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`standing, i.e. show that its case or controversy is amenable to resolution by a federal court,
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`by demonstrating that it suffers an injury which can be fairly traced to the defendant and
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`likely redressed by a favorable judgment.” Lone Star Silicon Innovations LLC v. Nanya
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`Tech. Corp., 925 F.3d 1225, 1234 (Fed. Cir. 2019) (citing Lujan, 504 U.S. at 560-61).
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`Courts have distilled constitutional standing requirements as demanding that a plaintiff
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`plead (1) a concrete and particularized injury in fact that is actual or imminent (as opposed
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`to conjectural or hypothetical); (2) a causal connection between the alleged injury and the
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`defendant’s challenged conduct; and (3) a likelihood that a favorable decision will redress
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`There are two types of standing: The first is referred to as prudential or statutory
`standing while the second variety of standing is constitutional standing. See Sec’y of State
`of Md. v. Joseph H. Munson Co., 467 U.S. 947, 955 (1984). “Constitutional [or ‘Article
`III’] standing concerns whether the plaintiff’s personal stake in the lawsuit is sufficient to
`make out a concrete ‘case’ or ‘controversy’ to which the federal judicial power may extend
`under Article III, § 2.” Pershing Park Villas Homeowners Ass’n v. United Pac. Ins. Co.,
`219 F.3d 895, 899 (9th Cir.2000); see also Lujan v. Defenders of Wildlife, 504 U.S. 555,
`559-60 (1992). Constitutional standing limitations are jurisdictional, cannot be waived,
`and a court must resolve doubts as to constitutional standing even if sua sponte. See Indep.
`Living Ctr. of S. Cal., Inc. v. Shewry, 543 F.3d 1050, 1064-65 (9th Cir. 2008). Prudential
`or statutory standing, on the other hand, is not jurisdictional and refers to the requirement
`that “[t]he plaintiff generally must assert his own legal rights and interests[ ] and cannot
`rest his claim to relief on the legal rights or interests of third parties.” Munson, 467 U.S.
`at 955; see also City of Los Angeles v. Cty. of Kern, 581 F.3d 841, 845 (9th Cir. 2009)
`(noting that prudential standing consists of “judicially self-imposed limits on the exercise
`of federal jurisdiction, founded in concern about the proper—and properly limited—role
`of the courts in a democratic society”) (internal quotations and citations omitted).
`Defendant’s challenge appears to be limited to constitutional standing; however, as
`discussed below, it appears prudential standing concerns exist in this case as well.
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`that injury. Mojave Desert Holdings, LLC v. Crocs, Inc., 987 F.3d 1070, 1078 (Fed. Cir.
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`2021); Massachusetts v. EPA, 549 U.S. 497, 517 (2007). The plaintiff must establish
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`standing “in the same way as any other matter on which the plaintiff bears the burden, i.e.,
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`with the manner and degree of evidence required at the successive stages of the litigation.”
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`Lujan, 504 U.S. at 561.
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`As applies to patent cases, “[p]atents and the rights they confer are creatures of
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`statute.” Invenergy Renewables LLC v. United States, 422 F. Supp. 3d 1255, 1271 (Ct.
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`Int’l Trade 2019), modified, 476 F. Supp. 3d 1323 (Ct. Int’l Trade 2020). Section 2 of the
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`Leahy-Smith America Invents Act (the “AIA”) vests the United States Patent and
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`Trademark Office with the power to grant and issue patents, 35 U.S.C. § 2, while section
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`154 vests patent owners with “the right to exclude others from making, using, offering for
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`sale, or selling [an] invention,” 35 U.S.C. § 154(a). See also 35 U.S.C. §§ 271 (“[W]hoever
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`without authority makes, uses, offers to sell, or sells any patented invention . . . infringes
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`the patent.”); 281 (“A patentee shall have remedy by civil action for infringement of his
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`patent.”); 100(d) (“The word ‘patentee’ includes not only the patentee to whom the patent
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`was issued but also the successors in title to the patentee.”). Accordingly, in patent
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`infringement suit, “the touchstone of constitutional standing . . . is whether a party can
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`establish that it has an exclusionary right in a patent that, if violated by another, would
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`cause the party holding the exclusionary right to suffer legal injury.” WiAV Sols. LLC v.
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`Motorola, Inc., 631 F.3d 1257, 1265 (Fed. Cir. 2010). “‘Exclusionary rights’ involve the
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`ability to exclude others from practicing an invention or to ‘forgive activities that would
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`normally be prohibited under the patent statutes.’” Lone Star, 925 F.3d at 1234 (quoting
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`Morrow v. Microsoft Corp., 499 F.3d 1332, 1342 (Fed. Cir. 2007)).
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`At the pleading stage, Plaintiff must demonstrate its standing to pursue this lawsuit
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`by general factual allegations. See, e.g., Lone Star, 925 F.3d at 1234 (“At the pleading
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`stage, ‘general factual allegations . . . may suffice’ to satisfy these [standing]
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`requirements.”). Plaintiff’s complaint seeks relief under the AIA. Compl. at ¶ 5. However,
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`the Court finds that Plaintiff has failed to show it can meet any of the three requirements
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`-12-
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`for constitutional standing.
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`a.
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`Actual or Imminent Injury at the Time of Complaint
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`Defendant argues that “[t]he patent statutes and caselaw make clear that new claims
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`presented during inter partes review do not become part of the patent with the issuance of
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`the final written decision, but rather with the issuance of the inter partes review certificate.”
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`Mot. at 9:1-4. As a result, until Plaintiff’s new claims become a part of the 302 Patent,
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`Plaintiff has not “actual or imminent” injury to create standing. Id. Plaintiff responds that
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`it “has standing because the issuance of the [IPR] certificate is imminent.” Oppo. at 4:14-
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`15. In response, Defendant argues that “[u]nless and until the Patent Office issues the inter
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`partes review certificate adding the asserted claims to the ’302 Patent, there is no standing
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`for the present case and it must be dismissed.” Reply at 5:28-6:2.
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`“[I]n a patent infringement case, the actual or threatened injury required by Article
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`III exists solely by virtue of the Patent Act.” Invenergy, 422 F. Supp. 3d at 1271. The
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`language of section 154 is straightforward and provides a patent owner with the right to
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`exclude others from “making, using, offering for sale, and selling” a patented invention.
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`See id. “Constitutional injury in fact occurs when a party performs at least one prohibited
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`action with respect to the patented invention that violates these exclusion