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Home Semiconductor Corp. v. Samsung Elecs. Co.

United States District Court for the District of Delaware

March 26, 2020, Decided

Civil Action No. 13-cv-2033-RGA

Opinion

MEMORANDUM ORDER

Defendants filed a motion to dismiss. (D.I. 175). I referred it to a Magistrate Judge. (D.I. 218). The Magistrate Judge made a Report and Recommendation. (D.I. 236). Plaintiff filed objections. (D.I. 244). Defendants responded. [*2]  (D.I. 247).

Magistrate Judges have authority to make recommendations pursuant to 28 U.S.C. § 636(b)(1)(B). Both sides agree that my review of any objections to this report is de novo. (D.I. 244 at 4; D.I. 247 at 1); see Fed. R. Civ. P. 72(b)(3).

The Magistrate Judge recommended that I grant Defendants' motion to dismiss without prejudice. (D.I. 236 at 1). First, the Magistrate Judge recommended that dismissal is appropriate because Plaintiff has failed to satisfy the burden to show that it has standing. (Id. at 10). In making this recommendation, the Magistrate Judge concluded that Plaintiff has failed to show that ProMOS intended to make the assignment to "Home Semiconductor Corporation of Samoa" rather than "Home Semiconductor, Inc. of Samoa." (Id.). Second, even if Plaintiff does have title in the patents, the Magistrate Judge recommended that I grant Defendants' motion to dismiss because ProMOS did not transfer all substantial rights in the asserted patents through the Patent Transfer and License Agreement ("PTLA"). (Id. at 14).

Plaintiff objects to the Magistrate Judge's first recommendation. (D.I. 244 at 4). Plaintiff argues that the "record is clear and unambiguous that ProMOS (the prior owner of the patents) intended to transfer the patents-in-suit [*3]  to a Samoan company named Home Semiconductor owned by Mr. Hsu." (Id. at 5). Plaintiff argues that the PTLA contains a typographical error in naming the assignee as "Home Semiconductor, Inc. of Samoa" instead of "Home Semiconductor Corporation of Samoa." (Id.). Plaintiff relies on Aevoe Corp. v. AE Tech Co., 13 F. Supp. 3d 1072 (D. Nev. 2014). (Id.). In that case, the district court found that an error identifying an assignee as "Aevoe Inc." rather than "Aevoe Corp." was not fatal to the assignee's standing to assert infringement of the patent. Id. at 1075-76.

Aevoe differs from the instant case in an important aspect. In Aevoe, a "Corrective Assignment to Correct the Name of the Assignee from Aevoe Inc. to Aevoe Corp." was filed with the USPTO. Id. at 1075. This document created "a presumption of validity as to the assignment," shifting the burden to any challenger of the assignment. Id.

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2020 U.S. Dist. LEXIS 53242 *

HOME SEMICONDUCTOR CORPORATION, Plaintiff, v. SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS AMERICA, INC., SAMSUNG SEMICONDUCTOR, INC., and SAMSUNG AUSTIN SEMICONDUCTOR, LLC, Defendants.

Prior History: Home Semiconductor Corp. v. Samsung Elecs. Co., 2019 U.S. Dist. LEXIS 82723 (D. Del., May 16, 2019)

CORE TERMS

patents, recommendation, substantial rights, rights, licensee, license, infringement, assignee, licensor