Opinion

1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 SOUTHERN DISTRICT OF CALIFORNIA 10 11 ADVANTEST TEST SOLUTIONS, Case No.: 3:25-cv-2604-JES-BJW INC., 12 ORDER GRANTING MOTION TO Plaintiff, 13 DISMISS v. 14 AEM HOLDINGS LTD., a Singapore [ECF No. 24] 15 corporation; AEM SINGAPORE PTE 16 LTD, a Singapore corporation; and AEM AMERICAS, INC., a California 17 corporation, 18 Defendants. 19 20 This case is a patent infringement action arising from an alleged “copycat” of 21 patented temperature regulating technology relevant to a specific type of product test in the 22 semiconductor industry. Plaintiff Advantest Test Solutions, Inc. (“Plaintiff”) alleges that 23 Defendants AEM Holdings Ltd., AEM Singapore Pte. Ltd., and AEM Americas, Inc. 24 (collectively, “Defendants”) copied its patented temperature regulating technology with 25 the help of a former employee. ECF No. 1 (“Compl.”). Before the Court is Defendants’ 26 motion to dismiss, which argues Plaintiff makes too speculative of claims, does not show 27 active use in this country, does not differentiate amongst Defendants, and does not show 28 1 willfulness. ECF No. 24-1 (“Mot.”) at 8. Plaintiff opposed the motion on all bases (ECF 2 No. 32 (“Opp’n”)), and Defendants filed a reply (ECF No. 35 (“Reply”)). For the reasons 3 set forth below, the Court GRANTS the motion with leave to amend. 4 I. BACKGROUND 5 Plaintiff is a company that makes equipment used to test semiconductors, which are 6 key building blocks in modern electronic devices. Compl. ¶ 10. Semiconductor 7 manufacturers require thorough testing of the nano-meter scale circuits in their devices, 8 including functional tests, timing tests, and electric characteristic tests. Id. ¶ 11. These 9 companies use automated testing equipment to conduct their testing. Id. Thermal control 10 technology in automated testing equipment helps control highly variable system 11 temperatures to increase the accuracy of the test and protect the semiconductors being 12 tested. Id. ¶ 12. 13 The patents at issue in this action pertain to a novel thermal control technology 14 developed by Plaintiff called the wafer active thermal interposer (“wafer ATI”). Id. ¶¶ 19, 15 24. Plaintiff’s original active thermal interposer technology (“ATI”) product was designed 16 to regulate the temperature of devices during testing in systems-level tests, which evaluate 17 semiconductors in their final user environments. Id. ¶ 14. The wafer ATI expanded the ATI 18 technology to regulate temperature during a different test known as the wafer test, in which 19 individual pieces of a semiconductor are evaluated on a silicon wafer before the wafer is 20 diced into individual chips. Id. ¶ 17. The wafer ATI technology places a large circular 21 ceramic interposer with embedded heater and temperature sensors against the backside of 22 the wafer, while probe pins contact the front of the wafer for testing. Id. The wafer ATI, 23 used with a cold plate, operates as a system which allows for precise and selective control 24 of temperatures in different parts of the wafer. Id. 25 On November 19, 2020, Plaintiff filed a provisional patent application for the wafter 26 ATI as Provisional App. No. 63/115,813 (“the ’813 Provisional”). Id. ¶¶ 13, 24. On April 27 20, 2022, Plaintiff filed a patent application entitled “Wafer Scale Active Thermal 28 Interposer for Device Testing,” which issued as U.S. Patent No. 11,674,999 (“the ’999 1 Patent”). Id. ¶¶ 1, 25. On June 2, 2025, Plaintiff filed another patent application by the 2 same title, which issued as U.S. Patent No. 12,320,841 (“the ’841 Patent,”) (collectively 3 with the ’999 Patent, “the Asserted Patents”). Id. ¶¶ 1, 31. Plaintiff states that both the ’999 4 Patent and the ’841 Patent claim priority to the ’831 Provisional, and are entitled to the 5 filing date of the ’831 Provisional. Id. ¶¶ 24, 30, 35. 6 Plaintiff states that the wafer ATI technology involved in these patents was 7 developed under the leadership of Samer Kabbani, a former Advantest executive who was 8 later hired by Defendants. Id. ¶¶ 13, 19, 23. Kabbani worked for Plaintiff from 2019 to 9 2021 as the Executive Vice President of Business Development, and oversaw the 10 development of Plaintiff’s thermal products, including ATIs. Id. ¶ 13. Plaintiff states that 11 Kabbani proposed the development of the wafer ATI in late 2019, led the project to develop 12 the technology, performed market research, presented the project to internal stakeholders, 13 and began the process of commercializing the technology. Id. ¶¶ 17-21. Kabbani was 14 placed on administrative leave after an internal investigation revealed he had improperly 15 directed Plaintiff’s supply contracts towards a company he owned called Lattice. Id. 16 Kabbani’s administrative leave and employment ended when he was hired by Defendants. 17 Id. ¶¶ 22, 23. Defendants also purchased Lattice, which Plaintiff alleges they did to gain 18 access to Plaintiff’s technology. Id. ¶ 23. 19 In 2024, Defendants were issued four patents and two applications for a thermal 20 control wafer (“TCW”) which Plaintiff alleges copy the details of Plaintiff’s wafer ATI. 21 Id. ¶ 38. Plaintiff alleges that these patents also describe a ceramic wafer with embedded 22 heaters and temperature sensors divided into multiple thermal zones which works with a 23 cold plate to selectively control the temperatures of thermal zones of a wafer. Id. ¶ 40. 24 AEM advertised this technology within the industry as having the “potential to redefine 25 wafer thermal control during probe.” Id. ¶ 42. Plaintiff states that it has not been able to 26 access one of these products to directly analyze it due to constraints in the secretive 27 semiconductor test industry. Id. ¶ 43. 28 1 Plaintiff brings two claims of patent infringement under 35 U.S.C. § 271(a), one for 2 the ’999 patent and the other for the ’841 patent, alleging, direct, indirect, and contributory 3 infringement on its patents. Id. ¶¶ 46-73. 4 II. LEGAL STANDARD 5 A. Federal Rule of Civil Procedure 12(b)(6) 6 A motion to dismiss under Federal Rule of Civil Procedure (“FRCP”) 12(b)(6) for 7 failure to state a claim tests the legal sufficiency of a plaintiff’s claim. Navarro v. Block, 8 250 F.3d 729, 732 (9th Cir. 2001). When considering the motion, the court must accept as 9 true all well-pleaded factual allegations in the complaint. Bell Atlantic Corp. v. Twombly, 10 550 U.S. 544, 555 (2007). The court need not accept as true legal conclusions cast as factual 11 allegations. Id.; Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (“[t]hreadbare recitals of the 12 elements of a cause of action, supported by mere conclusory statements” are insufficient). 13 A complaint must “state a claim for relief that is plausible on its face.” Twombly, 14 550 U.S. at 570. To survive a motion to dismiss, a complaint must include non-conclusory 15 factual content. Id. at 555; Iqbal, 556 U.S. at 679. The facts and the reasonable inferences 16 drawn from those facts must show a plausible—not just a possible—claim for relief. 17 Twombly, 550 U.S. at 556; Iqbal, 556 U.S. at 679; Moss v. U.S. Secret Service, 572 F.3d 18 962, 969 (9th Cir. 2009). The focus is on the complaint, as opposed to any new facts alleged 19 in, for example, the opposition to a defendant’s motion to dismiss. See Schneider v. 20 California Dep’t of Corrections, 151 F.3d 1194, 1197 n.1 (9th Cir. 1998), reversed and 21 remanded on other grounds as stated in 345 F.3d 716 (9th Cir. 2003). “Determining 22 whether a complaint states a plausible claim for relief [is] . . . a context-specific task that 23 requires the reviewing court to draw on its judicial experience and common sense.” Iqbal, 24 556 U.S. at 679. The “mere possibility of misconduct” or “unadorned, the defendant- 25 unlawfully-harmed me accusation[s]” fall short of meeting this plausibility standard. Id.; 26 see also Moss, 572 F.3d at 969. 27 // 28 // 1 B. Leave to Amend 2 When a court dismisses a claim, it must then decide whether to grant the plaintiff 3 leave to amend. A district court should “freely give leave [to amend] when justice so 4 requires.” Fed. R. Civ. P. 15(a). The court considers factors such as “the presence or 5 absence of undue delay, bad faith, dilatory motive, repeated failure to cure deficiencies by 6 previous amendments, undue prejudice to the opposing party[,] and futility of the proposed 7 amendment.” See Moore v. Kayport Package Express, Inc., 885 F.2d 531, 538 (9th Cir. 8 1989) (citing Foman v. Davis, 371 U.S. 178, 182 (1962)). Dismissal without leave to 9 amend is proper only if it is clear that “the complaint could not be saved by any 10 amendment.” Intri-Plex Techs., Inc. v. Crest Group, Inc., 499 F.3d 1048, 1056 (9th Cir. 11 2007). 12 III. DISCUSSION 13 A. Direct Infringement Claims 14 Defendants argue that Plaintiff fails to allege domestic acts of infringement as 15 required by section 271(a). Mot. at 16. The Court agrees, and thus declines to address 16 Defendants’ remaining arguments regarding the direct infringement claims. 17 “It is well-established that the reach of section 271(a) is limited to infringing 18 activities that occur within the United States.” MEMC Elec. Materials, Inc. v. Mitsubishi 19 Materials Silicon Corp., 420 F.3d 1369, 1375 (Fed. Cir. 2005). “To determine whether the 20 defendant has made an offer to sell within the United States, we look to the location of the 21 contemplated sale, not the location of the offer.” Sound N Light Animatronics Co., LTD v. 22 Cloud b, Inc., No. CV 16-05271-GHK (JPRx), 2016 WL 7635950, at *4 (C.D. Cal. Nov. 23 10, 2016) (internal quotation omitted, cleaned up). Plaintiffs must plausibly allege some 24 activity occurring in this country, such as an offer directed at U.S. residents or sales or 25 production within the U.S. Id. Claims under section 271(a) that do not allege non- 26 conclusory facts showing activity in the U.S. are subject to dismissal. Id. at *5. 27 Here, the Complaint alleges that Defendants are making, using, selling, offering for 28 sale, and/or importing the accused products into the United States. Compl. ¶¶ 48, 62. As 1 this allegation is an element of Plaintiff’s claim, it is conclusory and not entitled to the 2 presumption of truth. See Twombly, 550 U.S. at 555. Plaintiff also points to Defendants’ 3 U.S. patent filings, the presence of a U.S. company and CEO, and industry reports that 4 Defendant was marketing a wafer ATI product to show domestic acts. Opp’n at 22 (citing 5 Compl. ¶¶ 5, 23, 42, 44). However, as Defendants point out, Defendants are global 6 companies that create, market, and sell products in places other than the U.S. Reply at 5. 7 Similarly, while the Court may consider Defendants’ patent applications in adjudicating 8 these claims, the existence of a patent application alone is insufficient to allege an 9 infringing act. See Rite-Hite Corp. v. Kelley Co., Inc., 56 F.3d 1538, 1547 (Fed. Cir. 1995) 10 (“There is no requirement in this country that a patentee make, use, or sell its patented 11 invention.”); Forest Labs., Inc. v. Abbott Labs., 239 F.3d 1305, 1313 (Fed. Cir. 2001) 12 (holding that the plaintiff needed to present evidence as to an accused product, not merely 13 a patent application “that may or may not describe the product.”). Thus, like in Sound N 14 Light, Plaintiffs do not allege non-conclusory facts showing advertisement, sale, or 15 development within this country, and have not stated a claim for direct infringement under 16 section 271(a). See Compl.; 2016 WL 7635950, at *5. The motion to dismiss is 17 GRANTED. 18 At the hearing on this motion, Plaintiff stated that it would be able to allege domestic 19 acts as required by section 271(a) if granted leave to amend. The Court thus finds that leave 20 to amend would not be futile. The Court GRANTS Plaintiff leave to file an amended 21 complaint in accordance with this order. 22 B. Induced Infringement and Contributory Infringement Claims 23 To show induced infringement, “the patentee must show, first that there has been 24 direct infringement, and second that the alleged infringer knowingly induced infringement 25 and possessed specific intent to encourage another’s infringement.” Kyocera Wireless 26 Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1353–54 (Fed. Cir. 2008). Contributory 27 infringement similarly requires a showing of direct infringement. Anticancer, Inc. v. Leica 28 Microsystems, Inc., No. 11CV2756 DMS (JMA), 2012 WL 12862585, at *4 (S.D. Cal. 1 ||May 14, 2012). “It is axiomatic that ‘[t]here can be no inducement or contributory 2 ||infringement without an underlying act of direct infringement.” Jn re Bill of Lading 3 || Transmission & Processing Sys. Pat. Litig., 681 F.3d 1323, 1333 (Fed. Cir. 2012) (quoting 4 Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311, 1326 (Fed. Cir. 2004). “[A] 5 || plaintiff need not identify a specific direct infringer if it pleads facts sufficient to allow an 6 || inference that at least one direct infringer exists." /d. at 1336. 7 As discussed above, Plaintiff has not plausibly alleged direct infringement under 8 || federal pleading standards because Plaintiff has not pled domestic acts of infringement. 9 do Plaintiff's induced and contributory claims allege domestic infringing actions by 10 any other party. See generally, Compl. Defendants argue correctly that Plaintiff's induced 11 contributory infringement claims cannot survive as a result. Mot. at 22-23; In re Bill 12 || of Lading, 681 F.3d at 1333. The Court thus GRANTS Defendants’ motion to dismiss 13 ||these claims, and GRANTS Plaintiff leave to amend these claims for the reasons set forth 14 || above. 15 IV. CONCLUSION 16 For the reasons explained above, the Court GRANTS Defendant’s motion to 17 dismiss. The Court also GRANTS Plaintiff leave to amend its complaint in accordance 18 || with this order. Plaintiff SHALL FILE an amended complaint, if any, no later than July 19 2026. 20 IT IS SO ORDERED. 21 55 ||Dated: June 29, 2026 Smet 23 Honorable James E. Sunmons Jr. 04 United States District Judge 25 26 27 28