Intellectual Property - Patents - The World in U.S. Courts: Summer 2019


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Direct and Indirect Infringement Claims Allowed to Proceed Against Japanese Parent that Neither Imported nor Sold Allegedly Infringing Cellphones in the US

Semcon IP Inc. v. Kyocera Corp., US District Court for the Eastern District of Texas, May 3, 2019

Semcon sued the Japanese Kyocera parent company alleging infringement of patents relating to cellphones imported into the US and sold by Kycoera subsidiaries. Kyocera moved to dismiss the complaint on the ground that it was alleged only to have engaged in acts outside the US that were not cognizable under the Patent Act. The Court agreed that the Patent Act is presumed not to apply extraterritorially but concluded that Semcon had provided sufficient facts to permit the plausible inference that a US domestic act of infringement had occurred. Specifically, the Court noted that determining the location of a “sale” in an infringement case “is necessarily a highly factual inquiry,” and that an “offer of sale” could be infringing even if made outside the US if the sale itself was to be consummated in the US. The Court also found that Semcon had made plausible allegations of indirect infringement by Kyocera, which claim has no geographic component for the illegal acts if the infringement ultimately occurs in the US. In reaching these conclusions the Court notably rejected Kyocera’s efforts to introduce facts via declaration and “judicial notice,” concluding the purported facts were inappropriate for consideration in a motion to dismiss.

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