Case 2:24-cv-00235-JRG Document 52 Filed 03/13/25 Page 1 of 4 PageID #: 773
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`DAEDALUS PRIME LLC,
`
`
`
`v.
`
`MEDIATEK, INC.,
`
`
`
`
`
`
`
`Plaintiff,
`
`Defendant.
`
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`MEMORANDUM OPINION AND ORDER
`
`
`
`
`
`
`CIVIL ACTION NO. 2:24-CV-00235-JRG
`
`
`
`
`
`
`Before the Court is the Motion to Dismiss in Part Plaintiff’s Complaint (the “Motion to
`
`Dismiss”) filed by Defendant MediaTek, Inc. (“Defendant”). (Dkt. No. 14.) Having considered
`
`the Motion to Dismiss, related briefing, and relevant authority, the Court finds that the Motion to
`
`Dismiss should be and hereby is GRANTED.
`
`I.
`
`FACTUAL AND PROCEDURAL BACKGROUND
`
`Plaintiff Daedalus Prime LLC’s (“Plaintiff”) filed this lawsuit against Defendant on April
`
`8, 2024, alleging that Defendant infringed eight U.S. patents. (Dkt. No. 1.) On August 5, 2024,
`
`Defendant filed this Motion to Dismiss. (Dkt. No. 14.) In the Motion to Dismiss, Defendant seeks
`
`to dismiss Plaintiff’s allegations of (1) infringement under 35 U.S.C. § 271(f) and (2) pre-suit
`
`willfulness. (Id. at 1.)
`
`II.
`
`LEGAL STANDARD
`
`A. Rule 12(b)(6)
`
`Under Federal Rule of Civil Procedure 12(b)(6), a court can dismiss a complaint that fails
`
`to state a claim upon which relief can be granted. To survive dismissal at this early stage, a
`
`complaint must state enough facts such that the claim to relief is plausible on its face. Thompson
`
`

`

`Case 2:24-cv-00235-JRG Document 52 Filed 03/13/25 Page 2 of 4 PageID #: 774
`
`v. City of Waco, 764 F.3d 500, 502 (5th Cir. 2014) (quoting Bell Atl. Corp. v. Twombly, 550 U.S.
`
`544, 570 (2007)). A claim is facially plausible when the plaintiff pleads enough facts to allow the
`
`Court to draw a reasonable inference that the defendant is liable for the misconduct alleged.
`
`Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). The Court accepts well-pled facts as true and views
`
`all facts in the light most favorable to the plaintiff, but it is not required to accept the plaintiff’s
`
`legal conclusions as true. Id. The Court must limit its review “to the contents of the pleadings.”
`
`Collins v. Morgan Stanley Dean Witter, 224 F.3d 496, 498-99 (5th Cir. 2000).
`
`III. DISCUSSION
`
`A. Infringement Under 35 U.S.C. § 271(f)
`
`Defendant argues that Plaintiff’s Complaint does no more than recite the statutory language
`
`of § 271(f) in a conclusory fashion. (Dkt. No. 14 at 2.) Plaintiff does not allege that anything
`
`specific is supplied from the United States to anywhere else, nor does it identify any alleged
`
`“component” as required by § 271(f). In response, Plaintiff argues that Defendant has design
`
`centers in the United States and that discovery will show that MediaTek employees in the United
`
`States supply components of the patented invention that are assembled into systems that infringe
`
`the Asserted Patents. (Dkt. No. 21 at 5-6.)
`
`The Court agrees with Defendant. In the Complaint, Plaintiff has done no more than a
`
`threadbare recitation of the elements of § 271(f) with no factual underpinnings. Plaintiff was
`
`required to plead at least some facts that would enable the Court to infer that infringement under
`
`§ 271(f) is plausible. It has failed to do so. Though Plaintiff raises various facts in its Opposition
`
`brief (see id.), such facts are not set forth in the Complaint and must be disregarded.
`
`Accordingly, the Court finds that Plaintiff has failed to plead any facts supporting its
`
`allegations of infringement under 35 U.S.C. § 271(f).
`
`2
`
`

`

`Case 2:24-cv-00235-JRG Document 52 Filed 03/13/25 Page 3 of 4 PageID #: 775
`
`B. Pre-Suit Willfulness
`
`This Court understands that a proper claim of willful infringement requires factual
`
`allegations that suffice to show both (1) “knowledge of the asserted patents” and (2) “culpable
`
`conduct or any set of facts supporting an inference of culpable conduct.” Fractus, S.A. v. TCL
`
`Corp., No. 2:20-CV-00097-JRG, 2021 WL 2483155, at *4 (E.D. Tex. June 2, 2021). Defendant
`
`argues that the Complaint in this case meets neither requirement. (Dkt. No. 14 at 4.) In particular,
`
`the Complaint merely alleges pre-suit knowledge and cites in a footnote to a 2022 Delaware
`
`complaint that Plaintiff never served and that does not relate to the Asserted Patents in this case.
`
`(Id.) Although certain patents asserted in the 2022 Delaware complaint may come from the same
`
`families as four of the Asserted Patents at issue in this case, Defendant points out that Plaintiff
`
`never pled this fact. (Id.) Nor has Plaintiff alleged that Defendant was put on notice of Plaintiff’s
`
`patent portfolio. (Id.) In addition, Defendant observes that “knowledge of the patent family is too
`
`attenuated to meet the threshold to give Defendants reasonable notice of the Patents-in-Suit as an
`
`underpinning to a potential willfulness finding.” (Id. at 6 (citing Intell. Ventures I LLC v. T Mobile
`
`USA, Inc., No. 2:17-CV-00577-JRG, 2019 WL 13535668, at *1 (E.D. Tex. Jan. 8, 2019).)
`
`Defendant further argues that Plaintiff has pled no facts suggesting evidence of the required
`
`culpable conduct. (Id. at 7.)
`
`Plaintiff responds with a litany of facts that are not in the Complaint, including allegations
`
`that Defendant had been put on notice of Plaintiff’s patent portfolio and that Plaintiff had asserted
`
`German counterparts to two of the Asserted Patents against Defendant in Germany. (Dkt. No. 21
`
`at 7-10.)
`
`The Court is required to limit its review to “the contents of the pleadings.” Lovelace v.
`
`Software Spectrum, Inc., 78 F.3d 1015 (5th Cir. 1996). The Complaint does not explain how the
`
`3
`
`

`

`Case 2:24-cv-00235-JRG Document 52 Filed 03/13/25 Page 4 of 4 PageID #: 776
`
`cited 2022 Delaware complaint, which was never served and does not reference any of the Asserted
`
`Patents, supposedly put Defendant on notice of the alleged infringement of the Asserted Patents in
`
`this litigation.
`
`Accordingly, the Court finds that Plaintiff has failed to plead any facts supporting its
`
`allegation of pre-suit willfulness.
`
`IV. CONCLUSION
`
`Defendant’s Motion to Dismiss (Dkt. No. 14) is GRANTED for the reasons stated herein
`
`and as such the Court DISMISSES WITHOUT PREJUDICE Plaintiff’s allegations of (1)
`
`infringement under 35 U.S.C. § 271(f) and (2) pre-suit willfulness. However, it is further
`
`ORDERED that Plaintiff shall have leave within 14 days from the date of this Order during
`
`which to file an amended pleading, addressing these legal theories and the shortcomings noted
`
`above.
`
`
`
`
`
`
`
`4
`
`.
`
`____________________________________
`RODNEY GILSTRAP
`UNITED STATES DISTRICT JUDGE
`
`So ORDERED and SIGNED this 12th day of March, 2025.
`
`