Case 5:24-cv-00011-RWS-JBB Document 12 Filed 04/03/24 Page 1 of 14 PageID #: 171
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
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`MONUMENT PEAK VENTURES, LLC,
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`Plaintiff,
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`Case No. 5:24-cv-00011-RWS-JBB
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`JURY TRIAL DEMANDED
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`v.
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`TCL ELECTRONICS HOLDINGS LTD.,
`TCL TECHNOLOGY GROUP
`CORPORATION, TCL INDUSTRIES
`HOLDINGS CO., LTD., TCL
`COMMUNICATION TECHNOLOGY
`HOLDINGS LIMITED, TCT MOBILE
`WORLDWIDE LTD., TCT MOBILE
`INTERNATIONAL LTD., HUIZHOU TCL
`MOBILE COMMUNICATION CO. LTD.,
`AND TCL COMMUNICATION LTD.
`
`
`Defendants.
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`
`DEFENDANTS’ MOTION TO DISMISS THE COMPLAINT
`FOR IMPROPER SERVICE UNDER FED. R. CIV. P. 12(B)(5) AND
`PLAINTIFF’S ALLEGATIONS OF INDIRECT INFRINGEMENT FOR
`FAILURE TO STATE A CLAIM UNDER FED. R. CIV. P. 12(B)(6)
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`Case 5:24-cv-00011-RWS-JBB Document 12 Filed 04/03/24 Page 2 of 14 PageID #: 172
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`TABLE OF CONTENTS
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`BACKGROUND FACTS ................................................................................................... 1
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`APPLICABLE LEGAL STANDARDS ............................................................................. 2
`A.
`Service of Process, Fed. R. Civ. P. 4, and Fed. R. Civ. P. 12(b)(5)........................ 2
`B.
`Pleading Standards and Fed. R. Civ. P. 12(b)(6) .................................................... 3
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`ARGUMENT ...................................................................................................................... 4
`A.
`Plaintiff’s Complaint Should Be Dismissed For Improper Service ........................ 4
`B.
`Plaintiff’s Indirect Infringement Claims Should Be Dismissed ............................. 5
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`CONCLUSION ................................................................................................................... 7
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`I.
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`II.
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`III.
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`IV.
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`i
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`Case 5:24-cv-00011-RWS-JBB Document 12 Filed 04/03/24 Page 3 of 14 PageID #: 173
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
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`ACQIS LLC v. Lenovo Group Ltd.,
`572 F.Supp.3d 291 (W.D. Tex. 2021)....................................................................................2, 4
`
`Aro Mfg. Co. v. Convertible Top Replacement Co.,
`377 U.S. 476 (1964) ...................................................................................................................6
`
`Ashcroft v. Iqbal,
`556 U.S. 662 (2009) ...................................................................................................................3
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`Bell Atlantic Corp. v. Twombly,
`550 U.S. 544 (2007) ...................................................................................................................3
`
`In re Bill of Lading Transmission and Processing Sys. Pat. Litig.,
`681 F.3d 1323 (Fed. Cir. 2012)..................................................................................................5
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`Buffalo Pats., LLC v. ZTE Corp.,
`No. W-21-CV-01065-ADA, 2022 WL 2055285 (W.D. Tex. June 3, 2022) .............................2
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`Commil USA, LLC v. Cisco Sys., Inc.,
`575 U.S. 632, 135 S. Ct. 1920 (2015) ........................................................................................6
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`Core Wireless Licensing S.A.R.L. v. Apple Inc.,
`2015 WL 4910427 (E.D. Tex. Aug. 14, 2015) ..........................................................................6
`
`DSU Med. Corp. v. JMS Co., Ltd.,
`471 F.3d 1293 (Fed. Cir. 2006)..................................................................................................5
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`Lifetime Indus., Inc. v. Trim-Lok, Inc.,
`869 F.3d 1372 (Fed. Cir. 2017)..................................................................................................5
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`Macrosolve, Inc. v. Antenna Software, Inc.,
`No. 6:11-CV-287, 2012 WL 12903085 (E.D. Tex. Mar. 16, 2012) ..........................................2
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`Nobelbiz, Inc. v. Insidesales.com, Inc.,
`2014 WL 12378804 (E.D. Tex. Oct. 14, 2014) .....................................................................5, 6
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`Traxcell Techs., LLC v. Nokia Sols. & Networks US LLC,
`No. 2:18-cv-00412-RWS-RSP, 2019 WL 8137134 (E.D. Tex. Oct. 22, 2019) ....................2, 4
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`Statutes
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`Texas Civil Practice and Remedies Code Sec. 17.044 ............................................................2, 3, 4
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`ii
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`Case 5:24-cv-00011-RWS-JBB Document 12 Filed 04/03/24 Page 4 of 14 PageID #: 174
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`Other Authorities
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`Fed. R. Civ. P. 4 ...............................................................................................................................2
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`Fed. R. Civ. P. 12(b)(5)............................................................................................................2, 4, 5
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`Fed. R. Civ. P. 12(b)(6)....................................................................................................................3
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`iii
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`Case 5:24-cv-00011-RWS-JBB Document 12 Filed 04/03/24 Page 5 of 14 PageID #: 175
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`Defendants TCL Technology Group Corporation et al. (collectively “Defendants” or
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`“TCL”) are all foreign entities located in China and Hong Kong and respectfully move the Court
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`for the dismissal of this litigation under Federal Rule of Civil Procedure 12(b)(5) for improper
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`service. By this motion, TCL is only making a special appearance for the purpose of raising the
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`referenced service issue; TCL does not make a general appearance. Plaintiff Monument Peak
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`Ventures, LLC (“Plaintiff” or “Monument”) attempted service of process on the Defendants by
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`serving a local office of the Texas Secretary of State, but that method of service is inadequate under
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`the Hague Service Convention for entities located in China and Hong Kong. Dismissal is
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`appropriate because none of the Defendants have been properly served under the Hague Service
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`Convention.
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`Defendants also move for the dismissal of Plaintiff’s claims of indirect patent infringement
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`(i.e., inducement and/or contributory infringement) under Federal Rule of Civil Procedure 12(b)(6)
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`for failure to state a claim. The Complaint fails to allege facts that plausibly show that the
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`Defendants had actual pre-suit knowledge of the asserted patents, much less actual pre-suit
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`knowledge that another party’s acts constituted infringement. Both are prerequisites to a claim of
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`indirect infringement. Plaintiff’s claim of indirect infringement should therefore be dismissed for
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`failure to state a claim.
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`iv
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`Case 5:24-cv-00011-RWS-JBB Document 12 Filed 04/03/24 Page 6 of 14 PageID #: 176
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`STATEMENT OF ISSUES PRESENTED
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`1.
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`Should the Court dismiss this lawsuit for improper service of process?
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`Defendants’ Answer: YES
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`2.
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`Is dismissal of Plaintiff’s indirect infringement claims proper when the Complaint
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`fails to allege facts plausibly showing that the Defendants knew of the asserted patents and knew
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`that another party’s acts constituted infringement?
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`Defendants’ Answer: YES
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`v
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`Case 5:24-cv-00011-RWS-JBB Document 12 Filed 04/03/24 Page 7 of 14 PageID #: 177
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`I.
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`BACKGROUND FACTS
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`Plaintiff filed the Complaint on January 22, 2024, alleging that certain TCL-branded
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`smartphones infringe the claims of two patents: U.S. Patent No. 7,092,573 (the “‘573 Patent”),
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`and U.S. Patent No. 7,683,962 (the “’962 Patent”).
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`There are no allegations that Plaintiff is in the same line of business, much less a competitor
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`of TCL. There are no allegations that TCL had any prior business relationship or interactions with
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`Plaintiff. Similarly, there are zero allegations that TCL had knowledge of the Asserted Patents
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`prior to the date when Plaintiff filed its Complaint, much less knowledge of the alleged
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`infringement. Despite these facts, the Complaint alleges that each of the Defendants is liable for
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`indirect infringement, i.e., induced and/or contributory infringement. See Compl., ¶¶ 17, 19, 21,
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`22, 25, 26, 31, 46, 58, 59, 62, 64, 78, 79, 80, 81, 83-86.
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`Plaintiff failed to properly serve each of the named Defendants with the Complaint and
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`Summons. Defendants TCL Technology Group Corporation, TCL Industries Holdings Co., TCL
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`Communication Technology Holdings Limited, and Huizhou TCL Mobile Communication Co.
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`Ltd. and TCL Communication Ltd. are foreign entities located in China. See Compl., ¶¶ 4, 5, 6, 9
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`and 10. Defendants TCT Mobile Worldwide Ltd., TCT Mobile International Ltd., and TCL
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`Electronics Holdings Ltd. are foreign entities located in Hong Kong. See Compl., ¶¶ 3, 7, 8. Rather
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`than properly serve the Defendants in accordance with the requirements of the Hague Service
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`Convention, Plaintiff has attempted service via an office of the Texas Secretary of State located in
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`Austin, Texas. See Returned Summons, ECF Nos. 7-10.
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`1
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`Case 5:24-cv-00011-RWS-JBB Document 12 Filed 04/03/24 Page 8 of 14 PageID #: 178
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`II.
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`APPLICABLE LEGAL STANDARDS
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`A.
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`Service of Process, Fed. R. Civ. P. 4, and Fed. R. Civ. P. 12(b)(5)
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`The vehicle for dismissing an action for improper service is Fed. R. Civ. P. 12(b)(5), but
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`service of process is governed by Fed. R. Civ. P. 4. For entities located outside the United States,
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`like the Defendants to this lawsuit, service under Fed. R. Civ. P. 4 must also comply with all
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`applicable treaties or conventions – namely the Hague Service Convention. Plaintiff attempts to
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`rely on Texas Civil Practice and Remedies Code Sec. 17.044, which allows for substitute service
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`of process on certain defendants by serving an agent at the Texas Secretary of State. But Texas
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`courts have recently held that this method of service is improper for defendants in foreign countries
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`that have objected to service via mail because the Hague Service Convention preempts Texas Civil
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`Practice and Remedies Code Sec. 17.044. See ACQIS LLC v. Lenovo Group Ltd., 572 F.Supp.3d
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`291, 298-302 (W.D. Tex. 2021); see also Buffalo Pats., LLC v. ZTE Corp., No. W-21-CV-01065-
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`ADA, 2022 WL 2055285, at *6 (W.D. Tex. June 3, 2022) (citing Macrosolve, Inc. v. Antenna
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`Software, Inc., No. 6:11-CV-287, 2012 WL 12903085, at *2 (E.D. Tex. Mar. 16, 2012) (“Because
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`substituted service on the Texas Secretary of State for a nonresident defendant requires the
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`transmittal of judicial documents abroad, the Hague Convention is implicated); Traxcell Techs.,
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`LLC v. Nokia Sols. & Networks US LLC, No. 2:18-cv-00412-RWS-RSP, 2019 WL 8137134, at
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`*3–4 (E.D. Tex. Oct. 22, 2019) (“the [Hague] Convention pre-empts inconsistent methods of
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`service prescribed by state law in all cases to which it applies”). Service of process by mail is not
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`2
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`Case 5:24-cv-00011-RWS-JBB Document 12 Filed 04/03/24 Page 9 of 14 PageID #: 179
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`permitted in China or Hong Kong1 so service of the Defendants under Texas Civil Practice and
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`Remedies Code Sec. 17.044 is improper because it conflicts with the requirements of Hague
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`Service Convention for service in China and Hong Kong.
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`B.
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`Pleading Standards and Fed. R. Civ. P. 12(b)(6)
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`When the sufficiency of a complaint is challenged in a Fed. R. Civ. P. 12(b)(6) motion, the
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`plaintiff must demonstrate that the “complaint … contain[s] sufficient factual matter, accepted as
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`true, to ‘state a claim to relief that is plausible on its face.’” Ashcroft v. Iqbal, 556 U.S. 662, 678
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`(2009) (quoting Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007)). A claim is facially
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`plausible when a plaintiff “pleads factual content that allows the court to draw the reasonable
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`inference that the defendant is liable for the misconduct alleged.” Iqbal, 556 U.S. at 678.
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`Plausibility requires showing more than the “sheer possibility” of relief but less than a probable
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`entitlement to relief. Id. “Where a complaint pleads facts that are ‘merely consistent with’ a
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`defendant’s liability, it ‘stops short of the line between possibility and plausibility of entitlement
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`to relief.’” Id. (quoting Twombly, 550 U.S. at 557).
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`While pleaded facts must be accepted as true for purposes of a motion to dismiss, courts
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`should not credit mere conclusions that are not plausibly supported by pleaded facts. “[B]are
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`assertions,” such as those that “amount to nothing more than a ‘formulaic recitation of the
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`elements’” of a claim are insufficient to state a claim for relief. Iqbal, 556 U.S. at 681 (quoting
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`Twombly, 550 U.S. at 555). “[T]hreadbare recitals of the elements of a cause of action, supported
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` 1
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` See China Judicial Assistance Information (state.gov)
`(https://travel.state.gov/content/travel/en/legal/Judicial-Assistance-Country-
`Information/China.html) (Exhibit A) and Hong Kong judicial Assistance Information (state.gov)
`(https://travel.state.gov/content/travel/en/legal/Judicial-Assistance-Country-
`Information/HongKong.html) (Exhibit B).
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`3
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`Case 5:24-cv-00011-RWS-JBB Document 12 Filed 04/03/24 Page 10 of 14 PageID #: 180
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`by mere conclusory statements, do not suffice.” Id at 678.
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`III. ARGUMENT
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`A.
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`Plaintiff’s Complaint Should Be Dismissed For Improper Service
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`The pleadings themselves establish that the named Defendants are foreign entities in China
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`and Hong Kong (see Compl., ¶¶ 3-10) and that Plaintiff attempted service on the Defendants under
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`Texas Civil Practice and Remedies Code Sec. 17.044 by serving an agent at a local office of the
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`Texas Secretary of State (see Returned Summons, ECF Nos. 7-10). This method of service is
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`inadequate and improper in this instance because, once served, the Texas Secretary of State mails
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`a notice of service to the defendants. See Traxcell Techs., 2019 WL 8137134, at *3. Because
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`China and Hong Kong have objected to service by mail (see footnote 1 above and Exhibits A and
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`B), the Texas Secretary of State’s practice of mailing a notice of service does not meet the
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`requirements of the Hague Service Convention for these countries. Dismissal is therefore required
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`under Fed. R. Civ. P. 12(b)(5) and district court precedent.
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`Judge Alan Albright recently addressed this very same issue in ACQIS LLC v. Lenovo
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`Group Ltd., 572 F.Supp.3d 291 (W.D. Tex. 2021) and dismissed the Chinese and Mexican
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`defendants for improper service. Id. at 302. After a thorough discussion and analysis of Texas
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`law, the Hague Service Convention, and U.S. Supreme Court precedent, Judge Albright concluded
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`that service of process on the Chinese and Mexican defendants was not complete when an agent
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`at the Texas Secretary of State received process and that the Texas Secretary of State’s practice of
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`forwarding a notice of service by mail did not comport with the requirements of Hague Service
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`Convention when the defendant entities are in countries that have objected to service by mail. Id.
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`at 298-302. Citing the U.S. Dept. of State – Bureau of Consular Affairs website, Judge Albright
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`observed that China and Mexico do not permit service of process by mail, which in turn prohibits
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`4
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`Case 5:24-cv-00011-RWS-JBB Document 12 Filed 04/03/24 Page 11 of 14 PageID #: 181
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`service under Texas Civil Practice and Remedies Code Sec. 17.044. Id. at 300, citing fn. 4. The
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`same principle applies here and Defendants cite the same source (the U.S. Dept. of State – Bureau
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`of Consular Affairs website) to show that service of process by mail is improper in China and
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`Hong Kong – the two countries where the Defendants are located. See Exhibits A and B.
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`For these reasons, the Court should Grant the Defendants’ motion to dismiss under Fed. R.
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`Civ. P. 12(b)(5) for the improper service of all Defendants.
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`B.
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`Plaintiff’s Indirect Infringement Claims Should Be Dismissed
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`The Complaint asserts that each Defendant has indirectly infringed the claims of the
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`Asserted Patents by purportedly inducing and/or contributing to infringement by “end users” (i.e.,
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`infringement under 35 U.S.C. §271 (b) and/or (c)). See Compl., ¶¶ 17, 19, 21-22, 25-26, 31, 46,
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`58-59, 62, 64, 78-79, 80-81, 83-86. To survive a motion to dismiss on claims of inducement and/or
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`contributory infringement, a plaintiff must plead facts plausibly showing that the accused infringer
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`(i) knew of the patent, and (ii) knew as well that the acts of the third-party constitute patent
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`infringement. See DSU Med. Corp. v. JMS Co., Ltd., 471 F.3d 1293, 1304 (Fed. Cir. 2006) (“The
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`requirement that the alleged infringer knew or should have known his actions would induce actual
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`infringement necessarily includes the requirement that he or she knew of the patent.”); see also
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`Nobelbiz, Inc. v. Insidesales.com, Inc., 2014 WL 12378804, *2 (E.D. Tex. Oct. 14, 2014)
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`(“Induced infringement “requires that the alleged infringer knowingly induced infringement and
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`possessed specific intent to encourage another's infringement.”). For an induced infringement
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`claim “to survive a motion to dismiss, a complaint must plead facts plausibly showing that the
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`accused infringer ‘specifically intended [another party] to infringe [the patent] and knew that the
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`[other party’s] act constituted infringement.’” Lifetime Indus., Inc. v. Trim-Lok, Inc., 869 F.3d
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`1372, 1379 (Fed. Cir. 2017) (alterations in original) (quoting In re Bill of Lading Transmission
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`5
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`Case 5:24-cv-00011-RWS-JBB Document 12 Filed 04/03/24 Page 12 of 14 PageID #: 182
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`and Processing Sys. Pat. Litig., 681 F.3d 1323, 1339 (Fed. Cir. 2012)).
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`Like induced infringement, contributory infringement requires knowledge of the patent-in-
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`suit and knowledge that the accused product is especially made or adapted to be used in an
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`infringing manner. See Commil USA, LLC v. Cisco Sys., Inc., 575 U.S. 632, 135 S. Ct. 1920, 1926
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`(2015) (citing Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U.S. 476, 488 (1964)); see
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`also Nobelbiz, 2014 WL 12378804 at *2 (“A party contributorily infringes a patent if: (1) it sells
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`or offers to sell a material or apparatus for use in practicing a patented process; (2) that is material
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`to practicing the invention; (3) which has no substantial non-infringing uses; (4) and is known by
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`the party to be especially made or especially adapted for use in an infringement of such patent”).
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`Here, the Complaint does not allege facts plausibly showing that any of the Defendants had
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`pre-suit knowledge of the Asserted Patents or knew that another party’s acts constituted
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`infringement. In fact, Plaintiff alleges that the Defendants received notice of the alleged
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`infringement through the filing of the Complaint. See Compl., ¶¶ 79, 80, 81, 82, 84. The
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`Complaint does not even include a formulaic recitation of the elements for induced infringement
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`or contributory infringement (as identified above), much less facts that would plausibly support
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`the elements of Plaintiff’s indirect infringement claims against each of the Defendants, which, this
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`Court has recognized, must be alleged to survive a motion to dismiss. See Nobelbiz, 2014 WL
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`12378804 at *3-4; see also Core Wireless Licensing S.A.R.L. v. Apple Inc., 2015 WL 4910427, *4
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`(E.D. Tex. Aug. 14, 2015) (granting motion to dismiss induced infringement and contributory
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`infringement claims).
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`Under this Eastern District of Texas precedent, the Court should dismiss Plaintiff’s charges
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`of indirect infringement for failure to state a claim.
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`6
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`Case 5:24-cv-00011-RWS-JBB Document 12 Filed 04/03/24 Page 13 of 14 PageID #: 183
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`IV. CONCLUSION
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`For the reasons explained above, each of the Defendants respectfully requests that the
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`Court dismiss this litigation for improper service. The Defendants also request dismissal of
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`Plaintiff’s claims of indirect infringement (i.e., inducement and/or contributory infringement) for
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`failure to state a claim.
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`Dated: April 3, 2024
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`Respectfully submitted,
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`/s/ Scott Yackey
`Scott Yackey (Texas Bar No. 24100052)
`HARNESS, DICKEY & PIERCE, P.L.C.
`2801 Network Boulevard
`Suite 600
`Frisco, TX 75034
`Tel.: 469-777-5400
`Fax: 469-777-5401
`syackey@harnessip.com
`
`Robert M. Siminski (P44319) (to be admitted
`pro hac vice)
`Glenn E. Forbis (P52119) (to be admitted pro
`hac vice)
`Lead Attorney
`J. Bradley Luchsinger (P76115) (to be
`admitted pro hac vice)
`HARNESS, DICKEY & PIERCE, P.L.C.
`5445 Corporate Drive, Suite 200
`Troy, MI 48098
`248-641-1600
`rmsiminski@harnessip.com
`gforbis@harnessip.com
`bluchsinger@harnessip.com
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`Attorneys for Defendants
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`7
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`Case 5:24-cv-00011-RWS-JBB Document 12 Filed 04/03/24 Page 14 of 14 PageID #: 184
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that on April 3, 2024 a copy of the foregoing was filed
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`and served through the Court’s ECF system. All parties may access a copy of this document
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`through the Court’s system.
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`/s/ Scott Yackey
`Scott Yackey
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`8
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