Topsoe, Inc. v. Casale US, Inc. et al

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF TEXAS
GALVESTON DIVISION
TOPSOE, INC.,
Plaintiff.
V.
CASALE US, INC., et al.,
Defendants.
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CIVIL ACTION NO. 3:24-cv-00033
MEMORANDUM AND RECOMMENDATION
Counter-Defendants Topsoe, Inc. and Topsoe A/S (collectively, “Topsoe”)
move to dismiss Defendant Casale S.A.’s counterclaims for direct and indirect
infringement of Casale SA’s U.S. Patent No. 11,286,168 (the ’168 Patent). See
Dkt. 195. Having considered the briefing, the record, the applicable law, and the
arguments of counsel, I recommend that the motion to dismiss be denied.
BACKGROUND
The court is familiar with the facts of this case. See Dkt. 155 at 1–6. The
parties are competitors who own low-carbon ammonia processes, which are used
to reduce greenhouse gases emitted during the process of creating ammonia.
Topsoe, Inc. instituted this lawsuit on January 31, 2024, seeking a declaration that
the ’168 Patent and all related patents and applications of its family (collectively,
the “Disputed Patents”) are unenforceable because of Casale SA’s alleged fraud in
procuring the ’168 Patent. Topsoe, Inc. also seeks an injunction against Casale
asserting the Disputed Patents any further, and damages for Casale’s asserting its
allegedly 	unenforceable 	patents, 	false 	statements, 	and 	unfair 	competitive
practices.
On July 16, 2024, nearly six months after Topsoe Inc. filed this lawsuit, the
United States Patent Office issued a reexamination certificate with amended
claims for the ’168 Patent.
United States District Court
Southern District of Texas
ENTERED
April 27, 2026
Nathan Ochsner, Clerk
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On November 25, 2025, Judge Jeffrey V. Brown adopted my memorandum
and recommendation that Casale’s motion to dismiss Topsoe, Inc.’s claims be
denied. On December 9, 2025, Casale filed its answer and counterclaims. In that
document, Casale added Topsoe A/S as a third-party defendant and asserts claims
of direct and indirect infringement against both Topsoe entities. Topsoe has moved
to dismiss under Rule 12(b)(6), arguing that Casale fails to state a claim upon
which relief can be granted.
LEGAL STANDARD
A complaint may be dismissed for “failure to state a claim upon which relief
can be granted.” Fed. R. Civ. P. 12(b)(6). To survive a Rule 12(b)(6) motion to
dismiss, a complaint must allege “sufficient factual matter, accepted as true, to
‘state a claim to relief that is plausible on its face.’” Ashcroft v. Iqbal, 556 U.S. 662,
678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)). “A
claim has facial plausibility when the plaintiff pleads factual content that allows
the court to draw the reasonable inference that the defendant is liable for the
misconduct alleged.” Iqbal, 556 U.S. at 678 (citing Twombly, 550 U.S. at 556).
In patent cases, the Federal Circuit “review[s] a district court’s dismissal for
failure to state a claim under the regional circuit’s law.” CODA Dev. S.R.O. v.
Goodyear Tire & Rubber Co., 916 F.3d 1350, 1357 (Fed. Cir. 2019). In the Fifth
Circuit, I must “construe facts in the light most favorable to the nonmoving party,
as a motion to dismiss under 12(b)(6) is viewed with disfavor and is rarely
granted.” Turner v. Pleasant, 663 F.3d 770, 775 (5th Cir. 2011) (quotation
omitted), as revised (Dec. 16, 2011). “To satisfy this standard, the complaint must
provide 	more 	than 	conclusions, 	but 	it 	need 	not 	contain 	detailed 	factual
allegations.” Id. (quotation omitted).
ANALYSIS
Casale asserts direct and indirect infringement claims against Topsoe.
“Direct infringement under § 271(a) occurs where all steps of a claimed method are
performed by or attributable to a single entity.” Akamai Techs., Inc. v. Limelight
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Networks, Inc., 797 F.3d 1020, 1022 (Fed. Cir. 2015). “Indirect infringement,
whether inducement to infringe or contributory infringement, can only arise in the
presence of direct infringement, though the direct infringer is typically someone
other than the defendant accused of indirect infringement.” Dynacore Holdings
Corp. v. U.S. Philips Corp., 363 F.3d 1263, 1272 (Fed. Cir. 2004). Thus, indirect
infringement under § 271(b) requires (1) a showing of direct infringement and
(2) “knowledge that the induced acts constitute patent infringement.” In re Bill of
Lading Transmission & Processing Sys. Pat. Litig., 681 F.3d 1323, 1339 (Fed. Cir.
2012) (quotation omitted).
Topsoe advances several arguments for why Casale’s claims should be
dismissed, including that: (1) the pre-certificate liability bar of 35 U.S.C. § 252
protects Topsoe’s allegedly infringing conduct occurring prior to July 16, 2024;
and (2) method claims can be infringed only by performing the method, not by
offering to sell the method. I need not address either of these issues. Even without
the pre-certificate conduct—taking 	Casale’s well-pleaded factual allegations as
true and construing those facts in Casale’s favor, as I must—it is reasonable to infer
that, after July 16, 2024, either Topsoe or one of its customers has performed every
step of the ’168 Patent’s challenged method.
During oral argument on Topsoe’s motion, Topsoe’s counsel conceded that
Casale has “pointed to a lot of evidence that, if performed, [Topsoe’s] process
would plausibly infringe the asserted patent claims.” Hearing Tr. at 43:20–22.
Even so, Topsoe contends that it is entitled to dismissal because Casale has not
identified who performed all the steps or when they performed them. While that
information would be nice to have, this is not a Rule 9(b) fraud case in which “the
who, what, when, and where must be laid out before access to the discovery process
is granted.” 1 Williams v. WMX Techs., Inc., 112 F.3d 175, 178 (5th Cir. 1997). Here,
Casale need only provide “a short and plain statement of the claim showing that
1 The parties undertook extensive discovery related to Casale’s motion to dismiss before
Casale’s answers and counterclaims were filed.
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the pleader is entitled to relief.” Fed. R. Civ. P. 8(a)(2). “It might well be that no
evidence will exist as to performance of the ’[168] method. But that’s a matter for
summary 	judgment. 	The 	allegations 	are 	sufficient 	to 	proceed 	beyond 	the
pleadings. The motion to dismiss [should] be denied on this basis.” ConocoPhillips
Co. v. In-Depth Compressive Seismic Inc., No. 4:20-cv-04385, 2021 WL 1854516,
at *3 (S.D. Tex. May 10, 2021).
Similarly, Casale is not required to plead who, what, when, and where to
satisfy its pleading obligations as to indirect infringement. “For an allegation of
induced infringement to survive a motion to dismiss, a complaint must plead facts
plausibly showing that the accused infringer specifically intended another party to
infringe the patent and knew that the other party’s acts constituted infringement.”
Lifetime Indus., Inc. v. Trim-Lok, Inc., 869 F.3d 1372, 1379 (Fed. Cir. 2017)
(cleaned up). “Circumstantial evidence may suffice to prove specific intent.”
AlexSam, Inc. v. Aetna, Inc., 119 F.4th 27, 46 (Fed. Cir. 2024). Casale is “not
required to identify a specific customer. Given that [Casale]’s indirect infringement
claims can succeed at trial absent direct evidence of a specific direct infringer, [I]
cannot establish a pleading standard that requires something more.” Id. (quotation
omitted). Accordingly, Topsoe’s motion to dismiss should be denied.
CONCLUSION
For the reasons discussed above, I recommend that Topsoe’s motion to
dismiss (Dkt. 195) be denied.
The 	parties 	have 	14 	days 	from 	service 	of 	this 	Memorandum 	and
Recommendation to file written objections. See 28 U.S.C. § 636(b)(1)(C); Fed. R.
Civ. P. 72(b)(2). Failure to file timely objections will preclude appellate review of
factual findings and legal conclusions, except for plain error.
SIGNED this ____ day of April 2026.
______________________________
ANDREW M. EDISON
UNITED STATES MAGISTRATE JUDGE
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