1 

IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS

WACO DIVISION

NEONODE SMARTPHONE LLC,

 Plaintiff, 

v. 

SAMSUNG ELECTRONICS CO. LTD, 

SAMSUNG ELECTRONICS AMERICA, 

INC.,

 Defendants. 

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§ 

§ 

§ 

§ 

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6:20-CV-00507-ADA

6:23-CV-00204-ADA

ORDER ON DEFENDANTS’ MOTION TO DISMISS

Before the Court is Samsung Electronics Co., Ltd.’s and Samsung Electronics America, 

Inc.’s (collectively, “Samsung”) Motion to Dismiss Neonode Smartphone LLC’s (“Neonode”) 

claims of willful infringement of U.S. patent Nos. 8,812,993 (“’993 Patent”) and 8,095,879 (“’879 

Patent”) (collectively, “Asserted Patents”) and Neonode’s claims of indirect infringement and 

direct infringement of the ’993 Patent. ECF No. 12 (in the -00507 action); ECF No. 3 (in the -

00204 action).

1 After careful consideration of the parties’ briefings, the Court GRANTS-INPART Samsung’s Motion to Dismiss.

I. BACKGROUND

 Neonode filed the Complaint commencing this suit against Samsung on May 11, 2022, 

accusing Samsung of willfully infringing the Asserted Patents and directly and indirectly 

infringing the ’993 Patent, both pre- and post-suit. ECF No. 1 ¶¶ 37–52, 55–70. Neonode alleges 

that Neonode entered into a licensing agreement with Samsung on July 13, 2005, where Neonode 

licensed U.S. Application No. 10/315,250 to Samsung, which eventually issued as the ’879 Patent. 

1 Unless otherwise noted, all ECF Nos. herein refer to the -00507 action. 
2

Id. ¶ 17. The application was allegedly specifically referenced in the agreement. Id. The agreement 

terminated in 2009. Id. Samsung was sued by Apple Inc. on February 8, 2012, over claims of 

patent infringement. Id. ¶ 18. Samsung allegedly utilized Neonode’s “N1 Quickstart Guide V0.5” 

in its invalidity defense in Apple v. Samsung, which describes how to use the Neonode N1. Id. ¶ 

25; ECF No. 25 at 3. Multiple outlets covered Neonode’s ’879 Patent and Samsung’s use of the 

’879 Patent as a defense in the Apple v. Samsung litigation. ECF No. 1 ¶¶ 20–22. On September 

24, 2015, Neonode allegedly inquired about Samsung’s interest in Neonode’s patent portfolio, 

which contained the Asserted Patents, and were told by Samsung’s counsel almost a month later 

that Samsung was uninterested. ECF No. 25 at 5.

II. LEGAL STANDARD

Evaluating whether to grant a motion to dismiss under Rule 12(b)(6) is a “purely 

procedural question not pertaining to patent law.” McZeal v. Sprint Nextel Corp., 501 F.3d 1354, 

1356 (Fed. Cir. 2007). Thus, Fifth Circuit law governs. Id. In the Fifth Circuit, “all well-pleaded 

facts” are accepted as true, they are viewed “in the light most favorable to the plaintiff,” and “all 

reasonable inferences” are drawn in the plaintiff’s favor. Johnson v. BOKF Nat’l Ass’n, 15 F.4th 

356, 361 (5th Cir. 2021). A complaint must be “plausible on its face” with sufficient factual bases. 

Ashcroft v. Iqbal, 556 U.S. 544, 570 (2007). “[D]etermining whether a complaint states a plausible 

claim for relief . . . [is] a context-specific task that requires the reviewing court to draw on its

judicial experience and common sense.” Id. at 679. Additionally, there must be “factual content 

that allows the court to draw the reasonable inference that the defendant is liable for the misconduct 

alleged,” based on “more than a sheer possibility that a defendant has acted unlawfully.” Xiros, 

Ltd. v. Depuy Synthes Sales, Inc., W-21-CV-00681-ADA, 2022 WL 3592449, at *2 (W.D. Tex. 

Aug. 22, 2022) (citing Iqbal, 556 U.S. at 678). Furthermore, specific facts are not required, as long 
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as the statement gives the defendant “fair notice of what the . . . claim is and the grounds upon 

which it rests.” Erickson v. Pardus, 551 U.S. 89, 93 (2007) (alteration in original) (quoting Bell 

Atl. Corp. v. Twombly, 550 U.S. 554, 555 (2007)). Discovery should generally proceed when “the 

relevant information is beyond the access of the plaintiff . . . unless the complaint recites no more 

than sheer speculation about the plaintiff’s entitlement to relief.” Motiva Patents LLC v. Sony 

Corp., 408 F. Supp. 2d 819, 827 (E.D. Tex. 2019) (alteration in original). This is because a plaintiff 

“need not prove its case at the pleading stage.” Repairify, Inc. v. Keystone Auto. Indus., Inc., 610 

F. Supp. 3d 897, 900–01 (W.D. Tex. 2022) (quoting Nalco Co. v. Chem-Mod, LLC, 883 F.3d 1337, 

1350 (Fed. Cir. 2018)).

“To state a claim for willful infringement, ‘a plaintiff must allege facts plausibly showing 

that as of the time of the claim’s filing, the accused infringer: (1) knew of the patent-in-suit; (2) 

after acquiring that knowledge, it infringed the patent; and (3) in doing so, it knew, or should have 

known, that its conduct amounted to infringement of the patent.’” Parity Networks, LLC v. Cisco 

Sys., Inc., No. 6:19-CV-00207-ADA, 2019 WL 3940952, at *3 (W.D. Tex. July 26, 2019) (quoting 

Välinge Innovation AB v. Halstead New England Corp., No. 16-1082-LPS-CJB, 2018 WL 

2411218, at *13 (D. Del. May 29, 2018)). Without pleading that the defendant had knowledge of 

the alleged infringement, it is impossible to claim willful infringement. See Halo Elecs., Inc. v. 

Pulse Elecs., Inc., 579 U.S. 93, 105 (2016). Egregiousness is not a requirement to plead willful 

infringement, but rather a distinct claim to grant enhanced damages. SRI Int’l, Inc. v. Cisco Sys., 

Inc., 14 F.4th 1323, 1329–30 (Fed. Cir. 2021). Egregious conduct can exist without willfulness 

and willful conduct can exist without egregiousness. Välinge Innovation AB v. Halstead New 

England Corp., No. 16-1082-LPS-CJB, 2018 WL 2411218, at *9 (D. Del. May 29, 2018).
4

To allege direct infringement, the complaint must contain facts that “plausibly support the 

assertion that a defendant ‘without authority makes, uses, offers to sell, or sells any patented 

invention during the term of the patent.” Ruby Sands, LLC v. Am. Nat’l Bank of Tex., No. 2:15-cv1955, 2016 WL 3542430, at *2 (E.D. Tex. June 28, 2016) (quoting 35 U.S.C § 271(a)).

Evidence of direct infringement may be text-based or based on visual exhibits. Repairify, Inc., 610 

F. Supp. 3d at 901. Although the allegations must show that all claim limitations of at least one 

claim of the claimed invention are practiced by the accused products to satisfy the Twombly/Iqbal

pleading standard, Novitaz, Inc. v. inMarket Media, LLC, No. 16-cv-06795-EJD, 2017 WL 

2311407, at *3 (N.D. Cal May 26, 2017), the complaint satisfies this requirement if it alleges that 

the accused products, identified both by name and with visual exhibits, satisfy “each and every 

element of at least one claim of the [asserted] Patent.” Disc Disease Sols. Inc. v. VGH Sols., Inc., 

F.3d 1256, 1260 (Fed. Cir. 2018). And although some courts have found Disc Disease does not set 

the minimum requirements for pleading patent infringement, Pure Parlay, LLC v. Stadium Tech. 

Grp., Inc, No. 219CV00834GMNBNW, 2020 WL 569880, at *3 (D. Nev. Feb. 5, 2020), this Court 

and others have found that it does. Unification Techs. LLC v. Dell Techs., Inc., 6:20-CV-00499-

ADA, 2021 WL 1343188, at *3 (W.D. Tex. Jan 28, 2021); accord Berall v. Pentax of Am., Inc, 

No. 10-CV-577 (LAP), 2021 WL 3934200, at *5 (S.D.N.Y. Sept. 2, 2021). The facts used to 

support the alleged infringement do not need to “mimic the precise language used in a claim.” In 

re Bill of Lading Transmission & Processing Sys. Patent Litig., 681 F.3d 1323, 1343 (Fed. Cir. 

2012).

To establish indirect infringement, there must be a showing of induced or contributory 

infringement. 35 U.S.C. §§ 271(b–c). Both types of infringement require that the accused infringer

had actual knowledge or was willfully blind to the existence of the patents-in-suit. Glob.-Tech 
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Appliances, Inc. v. SEB S.A., 563 U.S. 754, 766, 769 (2011). There are three elements that must 

be pled for induced infringement according to § 271(b): (1) the defendant had actual knowledge 

of the patent; (2) the defendant knowingly induced a third-party to infringe the patent; and (3) the 

defendant had the specific intent to induce infringement. Affinity Labs of Tex., LLC v. Toyota 

Motor N. Am., No. W:13-CV-365, 2014 WL 2892285, at *2 (W.D. Tex. May 12, 2014) (citing 

DSU Med. Corp. v. JMS Co., Ltd., 471 F.3d 1293, 1305 (Fed. Cir. 2006)).

III. DISCUSSION

1. Willful Infringement of the Asserted Patents

Neonode alleges Samsung knew of the ’879 Patent both pre-suit and post-suit. ECF No. 25 

at 2–4, 6. Samsung argues these allegations are not factually supported. ECF No. 12 at 2.

Samsung’s primary contention is that Neonode fails to support its claim that Samsung had pre-suit 

knowledge of the Asserted Patents. Id.

Neonode alleges five sets of facts to support their claim. First, Samsung took a license to 

U.S. Application No. 10/315,250 (“’250 Application”) on December 10, 2002, which issued as the 

’879 Patent on January 10, 2012. ECF No. 25 at 2. The licensing agreement expired sometime 

during or after 2009. ECF No. 1 ¶ 17. Neonode asserts that because Samsung previously licensed

the ’250 Application, Samsung was interested in utilizing the technology which ultimately issued 

in the ’879 Patent, indicating their infringement. ECF No. 25 at 8. Although this does suggest that 

Samsung may have been infringing, it fails to show that Samsung had the requisite knowledge of 

the ’879 Patent’s existence as required to plead willful infringement. State Indus., Inc. v. A.O. 

Smith Corp., 751 F.2d 1226, 1236 (Fed. Cir. 1985). Just having knowledge of an application is 

typically insufficient because not all applications issue. Vasudevan Software, Inc. v. TIBCO 

Software Inc., No. C 11-06638 RS, 2012 WL 1831543, at *2–3 (N.D. Cal. May 18, 2012).
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Furthermore, the claims of a patent application when published may change prior to issuance. Even 

construing this in the light most favorable to the plaintiff, the license alone does not establish actual 

knowledge.

Second, Neonode argues that Samsung monitored industry press in preparation of Apple

Inc. v. Samsung Electronics Co., Ltd, No. 12-CV-00630-LHK (N.D. Cal 2014), providing them 

with actual knowledge of the ’879 Patent. ECF No. 25 at 3. Several articles discussing the ’879 

Patent were published between the filing of the initial complaint and trial. ECF No. 25 at 3. The 

patent number was published in at least one article. ECF No. 1 ¶ 21. This again does not plausibly 

indicate that Samsung gained actual knowledge of the ’879 Patent. State Indus., 751 F.2d at 1236. 

This only speculates that Samsung read the articles, and therefore is not sufficiently pleaded to 

establish actual knowledge. 

Third, Neonode argues that Samsung’s use of the Neonode N1 as prior art in Apple v. 

Samsung is sufficient to establish knowledge of the ’879 Patent. ECF No. 25 at 8, 10. It again is 

not. Neonode pleads that Samsung used the “Neonode Quickstart Guide V0.5” as a reference in 

the Apple case to support its invalidity contention. ECF No. 1 ¶ 25. Yet Neonode does not allege 

that the guide contains any statement that the Neonode N1 uses the technology in the ’879 Patent

necessary to impart actual knowledge on Samsung. Additionally, Neonode pleads that Samsung 

used the Neonode N1 at a court hearing in August 2011. ECF No. 25 at 10. But this was before

the ’879 Patent issued and therefore could not have imparted actual knowledge of the subsequently 

issued patent as required. State Indus., 751 F.2d at 1236. 

Fourth, Neonode argues is it reasonable to infer that Quinn Emanuel, Samsung’s counsel 

in the Apple lawsuit, informed Samsung of the ’879 Patent following the deposition Quinn 

Emanuel took as Motorola’s counsel in Motorola Mobility, Inc. v. Apple, Inc., No. 1:10cv023580-
7

Civ-UU. ECF No. 25 at 4. During that deposition, Neonode’s Vice President of Intellectual 

Property answered questions about the ’879 Patent. ECF No. 25 at 4. Neonode argues that Quinn 

Emanuel would have provided Samsung with information about the ’879 Patent to support 

Samsung’s invalidity defense. Samsung argues a law firm representing another client does not 

impute knowledge on itself. ECF No. 12 at 3–4. Given that Neonode did not specify whether any 

attorneys were counsel to Motorola and then were counsel to Samsung in the Apple suits, this is a 

speculative conclusion not sufficiently supported.

Fifth, Neonode points to its inquiry with Quinn Emanuel regarding Samsung’s interest in 

purchasing Neonode’s patent portfolio. ECF No. 25 at 10. Neonode alleges that “reasonable 

inferences . . . may be drawn therefrom establish[ing] that Samsung had pre-suit knowledge of the 

specific patents in suit.” ECF No. 25 at 10 n.3. But Neonode does not allege whether it informed 

Samsung of the issuance of the ’879 patent, the contents of Neonode’s conversation with Samsung, 

or whether it specifically informed Samsung of the Asserted Patents as part of the general 

discussion of Neonode’s patent portfolio. Finjan, Inc. v. Juniper Networks, Inc., No. C 17-04659 

WHA, 2018 WL 905909, at *3 (N.D. Cal Feb. 14, 2018). Instead, it asks the Court to make 

unwarranted speculation into Samsung’s investigation of the patent portfolio.

Thus, Neonode did not sufficiently plead pre-suit knowledge as required for pre-suit willful 

infringement for the ’879 Patent. Additionally, because Neonode’s assertions of pre-suit 

knowledge for the ’993 Patent are identical to the fourth and fifth facts described above, Neonode 

similarly does not sufficiently plead pre-suit knowledge of the ’993 Patent as required for willful 

infringement.

Samsung did, however, have knowledge of the Asserted Patents post-suit because Neonode 

served its complaint to Samsung, which listed the Asserted Patents that allegedly infringe. See 
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BillJCo, LLC v. Apple, Inc., 583 F. Supp. 3d 769, 778 (W.D. Tex. 2022). Neonode also alleges

that Samsung is continuing the infringing conduct. ECF No. 1 ¶¶ 52, 70 (alleging that the 

infringement “has been and continues to be willful . . . yet proceeded to engage in such conduct 

despite a high likelihood that a court would find the products to be infringing”). This is sufficient 

to satisfy post-suit willful infringement. BillJCo, 583 F. Supp. 3d at 778.

2. Direct Infringement of the ’993 Patent

Neonode asserts that Samsung offered to sell products that infringe the ’993 Patent, naming 

the Samsung Galaxy S, Galaxy A, Galaxy Note, and Galaxy Tab devices as the infringing products. 

ECF No. 1 ¶ 56. To support this assertion, Neonode alleges three of claim 1’s limitations in textual 

form. Id. ¶¶ 58–60. The other two claims, regarding the “edge” of the screen and a “strip” along

the edge, are not specifically mentioned. See id. ¶¶ 55–63. Samsung argues Neonode’s failure to 

specifically mention these limitations indicates the allegation is therefore insufficient. ECF No. 12

at 8–10. These limitations, however, are not “conspicuously” left out, as was the case in AMS, LLC

v. Muzzy, LLC, No. 18-CV-683-WMC, 2019 WL 1435844, at *1–2 (W.D. Wis. Mar. 29, 2019),

but rather visually identified as allowed under Repairify, 610 F. Supp. 3d at 900–01, which still

provides fair notice to Samsung. See ECF 1 ¶ 61. Furthermore, Neonode is not required to use the 

specific terms of “strip” and “edge” in their infringement allegations. Bill of Lading, 681 F.3d at 

1343. By stating that the padlock is in the “upper center of the display” in conjunction with the 

screenshot, Neonode has provided sufficient specification to put Samsung on notice of the 

allegations, satisfying Iqbal. ECF No. 1 ¶ 61. Because all elements and limitations of the claim are 

alleged, there is sufficient support for the direct infringement claim. Disc Disease, F.3d at 1260. 
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3. Indirect Infringement of the ’993 Patent

Having found there was direct infringement of the ’993 Patent, the remaining question is 

whether there was also indirect infringement. Neonode pleads induced infringement of the ’993 

Patent. ECF No. 1 ¶ 64. Neonode has not pleaded pre-suit actual knowledge but has pleaded postsuit knowledge of the ’993 Patent as previously discussed.

Samsung argues that Neonode has not made any showing that Samsung specifically 

intended to cause another party to directly infringe post-suit. ECF No. 12 at 7. In their complaint, 

Neonode points to Samsung’s support page for use of the allegedly infringing technology to 

encourage infringement. ECF No. 1 ¶ 65. As a result, users of the infringing products allegedly 

commit direct infringement. Id. ¶ 66. Thisis more than incident to product distribution, as Samsung 

alleges. ECF No. 12 at 8 (citing Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 

913, 937 (2005)). Instead, Neonode specifies Samsung’s instructions on how to infringe the ’993 

by changing the appropriate setting. ECF No. 1 ¶ 65. By providing instructions of how to infringe, 

Neonode has met the “low bar required at the pleading stage.” Lexington Luminance LLC V. Lowes 

Home Centers LLC, 4:18-cv-301-ALM-KPJ, 2019 WL 1317440, at *2 (E.D. Tex. Mar. 13, 2019);

see also Motiva Patents, LLC v. Sony Corp., 408 F. Supp. 3d 319, 831–33 (E.D. Tex. 2019). Thus, 

Samsung has sufficiently pleaded post-suit induced infringement, but failed to sufficiently plead 

pre-suit induced infringement.

IV. CONCLUSION

Based on the foregoing analysis of the facts and legal principles, Samsung’s motion to 

dismiss Neonode’s claims of post-suit willful infringement regarding both Asserted Patents, postsuit indirect infringement of the ’993 Patent, and direct infringement of the ’993 Patent is 

DENIED. But Samsung’s motion to dismiss Neonode’s claims of pre-suit willful infringement of 
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the Asserted Patents and pre-suit indirect infringement of the ’993 Patent is GRANTED. However, 

Neonode is allowed to amend its Complaint and re-plead its pre-suit indirect and willful 

infringement claims if it is able to elicit sufficient facts during fact discovery to support such 

allegations.

SIGNED this 27th day of June, 2023.