Kyocera International, Inc. v. Semcon IP Inc., No. 3:2018cv01575 - Document 16 (S.D. Cal. 2018)
Court Description: ORDER Granting Motion to Dismiss for Lack of Personal Jurisdiction [Doc. Nos. 12 , 15 ]. Signed by Judge Cathy Ann Bencivengo on 10/19/2018. (anh) (Main Document 16 replaced to correct image on 10/19/2018) (anh).
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1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 SOUTHERN DISTRICT OF CALIFORNIA 10 11 KYOCERA INTERNATIONAL, INC., Case No.: 3:18-CV-1575-CAB-MDD Plaintiff, 12 13 v. 14 SEMCON IP, INC., ORDER GRANTING MOTION TO DISMISS FOR LACK OF PERSONAL JURISDICTION Defendant. 15 [Doc. Nos. 12, 15] 16 17 18 Defendant Semcon IP, Inc. (“Semcon”) moves to dismiss the complaint of Plaintiff 19 Kyocera International, Inc. (“Kyocera”) for lack of personal jurisdiction and based on the 20 first to file rule. The motion has been fully briefed, and the Court deems it suitable for 21 submission without oral argument, so Semcon’s request for oral argument is DENIED. As 22 discussed below, because Semcon is not subject to personal jurisdiction in California for 23 Kyocera’s claims for declaratory relief of non-infringement of Semcon’s patents, 24 Semcon’s motion to dismiss is GRANTED. 25 I. 26 The Court is dismissing this lawsuit for lack of personal jurisdiction over Semcon, 27 so only allegations and evidence relevant to that issue are included here. Kyocera seeks 28 declaratory relief of non-infringement of four patents held by Semcon: U.S. Patent Nos. Background 1 3:18-CV-1575-CAB-MDD 1 7,100,061; 7,596,708; 8,566,627; and 8,806,247 (collectively, the “Patents”). Semcon is a 2 Texas corporation with its principal place of business in Texas. With its motion, Semcon 3 includes a declaration from Semcon’s chief executive officer and sole employee stating 4 that: (a) he resides in New York; (b) Semcon is not registered to do business in California; 5 (c) Semcon does not have a registered agent for service of process in California; (d) 6 Semcon does not have offices, employees, equipment, bank accounts or other assets in 7 California; (e) Semcon does not manufacture products, sell products, or solicit business in 8 California; (f) Semcon has never filed a lawsuit in California; and (g) Semcon’s only efforts 9 to enforce its rights under the Patents consist of lawsuits Semcon filed in the Eastern 10 District of Texas. [Doc. No. 12-2.] 11 Kyocera does not dispute any of these facts in its opposition. Nevertheless, 12 Kyocera’s complaint alleges that the Court has personal jurisdiction over Semcon for three 13 reasons: 14 1. Because Semcon has sought to enforce the Patents against at least two companies 15 that maintain their principal places of business in California [Doc. No. 1 at ¶ 7]; 16 2. Because Semcon has sought to enforce the Patents against at least three foreign 17 companies whose subsidiaries have principal places of business in California 18 [Id.]; and, 19 3. Because Semcon retained the services of a process server with a place of business 20 in California to serve a complaint in another lawsuit concerning the Patents on a 21 Taiwanese entity. [Id. at ¶ 8.] 22 In addition, in its opposition to the instant motion, Kyocera appears to contend that 23 Semcon’s appearances at two mediations before a Texas-based mediator concerning two 24 infringement lawsuits Semcon filed in the Eastern District of Texas make Semcon subject 25 to personal jurisdiction in this lawsuit because the mediations physically occurred in 26 27 28 2 3:18-CV-1575-CAB-MDD 1 California. [Doc. No. 13 at 7-8.]1 Kyocera does not dispute, however, Semcon’s argument 2 in its motion that Semcon did not purposefully select California as the forum for these 3 mediations. [Doc. No. 12 at 22-23.] 4 II. 5 “Because the issue of personal jurisdiction in a declaratory action for patent 6 invalidity and non-infringement is intimately related to patent law, personal jurisdiction . . 7 . is governed by the law of this circuit.”). Silent Drive, Inc. v. Strong Indus., Inc., 326 F.3d 8 1194, 1201 (Fed. Cir. 2003). Under Federal Circuit law, “[p]ersonal jurisdiction over an 9 out-of-state defendant is appropriate if the relevant state’s long-arm statute permits the 10 assertion of jurisdiction without violating federal due process.” Nuance Comms., Inc. v. 11 Abbyy Software House, 626 F.3d 1222, 1230 (Fed. Cir. 2010) (quoting 3D Sys., Inc. v. 12 Aarotech Labs, Inc., 160 F.3d 1373, 1376-77 (Fed. Cir. 1998)). “Under California’s long- 13 arm statute, California state courts may exercise personal jurisdiction ‘on any basis not 14 inconsistent with the Constitution of this state or of the United States.’” Daimler AG v. 15 Bauman, 571 U.S. 117, 125 (2014) (quoting Cal. Civ. Proc. Code Ann. § 410.10 (West 16 2004)). Thus, “the jurisdictional analyses under state law and federal due process are the 17 same.’” Nuance Comms., 626 F.3d at 1230 (citing Schwarzenegger v. Fred Martin Motor 18 Co., 374 F.3d 797, 800-801 (9th Cir. 2004)). Legal Standards 19 Under the Due Process Clause of the Fourteenth Amendment, to exercise personal 20 jurisdiction over an out-of-state defendant, the defendant must have “certain minimum 21 contacts with [the State] such that the maintenance of the suit does not offend traditional 22 notions of fair play and substantial justice.” Goodyear Dunlop Tires Operations, S.A. v. 23 Brown, 564 U.S. 915, 923 (2011) (quoting Int’l Shoe Co. v. Washington, 326 U.S. 310, 316 24 (1945) (internal quotation marks and citation omitted)). 25 jurisdiction may be either “general or all-purpose jurisdiction,” or “specific or case-linked This minimum contacts 26 27 28 1 Citation to page numbers of ECF documents is to the ECF watermark page number at the top of the page. 3 3:18-CV-1575-CAB-MDD 1 jurisdiction.” Id. at 919 (citing Helicopteros Nacionales de Colombia S.A. v. Hall, 466 2 U.S. 408, 414 (1984). Regardless, “it is essential in each case that there be some act by 3 which the defendant purposefully avails itself of the privilege of conducting activities 4 within the forum State, thus invoking the benefits and protections of its laws.” Avocent 5 Huntsville Corp. v. Aten Int’l Co., Ltd., 552 F.3d 1324, 1329 (Fed. Cir. 2008) (quoting 6 Hanson v. Deckla, 357 U.S. 253 (1958)). 7 Here, because the parties have not conducted discovery and there was no evidentiary 8 hearing, Kyocera is only required to make a prima facie showing that Semcon is subject to 9 personal jurisdiction. See AFTG-TG, LLC v. Nuvoton Tech. Corp., 689 F.3d 1358, 1360 10 (Fed. Cir. 2012). The uncontroverted allegations in the complaint must be taken as true 11 and factual conflicts must be resolved in Kyocera’s favor. Elecs. For Imaging, Inc. v. 12 Coyle, 340 F.3d 1344, 1349 (Fed. Cir. 2005). However, “bare formulaic accusations” that 13 a defendant maintains sufficient contacts with the forum state are inadequate. AFTG-TG, 14 689 F.3d at 1365; see also NuCal Foods, Inc. v. Quality Egg LLC, 887 F.Supp. 2d 977, 988 15 (E.D. Cal. 2012) (“[T]he court need not consider merely conclusory claims, or legal 16 conclusions in the complaint as establishing jurisdiction.”). 17 III. 18 Although Kyocera makes a conclusory allegation of general jurisdiction in the 19 complaint, in its opposition, Kyocera contends only that Semcon is subject to specific 20 personal jurisdiction in California. Specific jurisdiction is focused on the “relationship 21 among the defendant, the forum, and the litigation.” Daimler AG, 571 U.S. at 133. “To 22 establish specific jurisdiction, a plaintiff must demonstrate that ‘the defendant has 23 purposefully directed his activities at residents of the forum, and the litigation results from 24 alleged injuries that arise out of or relate to those activities.’” Avocent, 552 F.3d at 1330 25 (quoting Burger King Corp. v. Rudzewicz, 471 U.S. 462, 476-78 (1985) (internal quotation 26 marks and citations omitted)). Along these lines, the Federal Circuit has set forth a three 27 part test for determining whether specific personal jurisdiction satisfies due process in a 28 patent case: “(1) whether the defendant ‘purposefully directed’ its activities at residents of Discussion 4 3:18-CV-1575-CAB-MDD 1 the forum; (2) whether the claim ‘arises out of or relates to’ the defendant’s activities with 2 the forum; and (3) whether assertion of personal jurisdiction is ‘reasonable and fair.’” 3 Silent Drive, 326 F.3d at 1202 (citing Inamed Corp. v. Kuzmak, 249 F.3d 1356, 1360 (Fed. 4 Cir. 2001)). “The plaintiff has the burden of proving parts one and two of the test, and then 5 the burden shifts to the defendant to prove that personal jurisdiction is unreasonable.” 6 Grober v. Mako Prods, Inc., 686 F.3d 1335, 1346 (Fed. Cir. 2012). 7 Kyocera fails miserably at proving the first two parts of the test. “[I]n the context of 8 an action for declaratory judgment of non-infringement, invalidity, and/or unenforceability 9 . . . [t]he relevant inquiry for specific personal jurisdiction purposes [is] what extent has 10 the defendant patentee ‘purposefully directed [such enforcement activities] at residents of 11 the forum,’ and the extent to which the declaratory judgment claim ‘arises out of or relates 12 to those activities.’” Avocent, 552 F.3d at 1332-33 (quoting Breckenridge Pharm., Inc. v. 13 Metabolite Labs, Inc., 444 F.3d 1356, 1363 (Fed. Cir. 2006)). Although Kyocera need not 14 be the forum resident to whom Semcon’s enforcement activities are directed, to be subject 15 to personal jurisdiction, Semcon must “have engaged in ‘other activities’ that relate to the 16 enforcement or the defense of the validity of the relevant patents” in the forum beyond 17 merely notifying a party who happens to be located there of suspected infringement. Id. at 18 1333-34 (emphasis in original). “Examples of these ‘other activities’ include initiating 19 judicial or extra-judicial patent enforcement within the forum, or entering into an exclusive 20 license agreement or other undertaking which imposes enforcement obligations with a 21 party residing or regularly doing business in the forum.” Id. at 1334. 22 Kyocera offers no evidence that Semcon has engaged in any of these “other 23 activities” in or directed to California. Instead, the California connection to Semcon’s 24 enforcement activities argued by Kyocera is unequivocally tangential and decidedly 25 inadequate to justify the exercise of personal jurisdiction in this case. 26 enforcement efforts appear to be located exclusively in Texas. That two of the defendants 27 in the twelve patent infringement lawsuits Semcon filed in Texas happen to have principal 28 places of business in California is insufficient, without more, to satisfy Kyocera’s Semcon’s 5 3:18-CV-1575-CAB-MDD 1 obligation to demonstrate that Semcon purposefully directed its enforcement activities at 2 California.2 Cf. Walden v. Fiore, 571 U.S. 277, 285 (2014) (stating that the “‘minimum 3 contacts’ analysis looks to the defendant’s contacts with the forum State itself, not the 4 defendant’s contacts with persons who reside there” and that “a defendant’s relationship 5 with a plaintiff or third party, standing alone, is an insufficient basis for jurisdiction”); 6 Adobe Sys. Inc. v. Tejas Research, LLC., No. C-14-0868 EMC, 2014 WL 4651654, at *5 7 (N.D. Cal. Sept. 17, 2014) (holding that “the fact that [the defendant] has pursued 8 enforcement actions against California residents in the Eastern District of Texas does not 9 support the exercise of personal jurisdiction of [the defendant] in California”); Autonomy, 10 Inc. v. Adiscov, LLC, No. C 11-00420 SBA, 2011 WL 2175551, at *4 (N.D. Cal. June 3, 11 2011) (“[P]atent litigation commenced outside the forum is not probative of purposeful 12 availment.”); Juniper Networks, Inc. v. SSL Servs., LLC, No. C 08-5758 SBA, 2009 WL 13 3837266, at *4 (N.D. Cal. Nov. 16, 2009) (noting that the plaintiff’s “argument that the act 14 of filing a lawsuit against an alleged California resident—in a Texas district court—is 15 sufficient to make a prima facie showing that it has purposefully availed ‘itself of the 16 privilege of conducting activities within the forum State, thus invoking the benefits and 17 protections of its laws’” did not “make any logical sense”) (emphasis in original) (quoting 18 Avocent, 552 F.3d at 1329). 19 Kyocera’s other arguments of minimum contacts with California—that several 20 defendants in the Texas infringement actions have affiliates in California, that Semcon 21 attended mediations in California for two of the Texas infringement actions, and that 22 Semcon used an international process server with an office in California—are even 23 24 25 26 27 28 2 Notably, in the complaints against the two entities with principal places of business in California, Semcon alleges that the companies’ principal places of business are in Texas. [Doc. No. 13-4 at 2; Doc. No. 13-8 at 2-3.] Assuming Semcon’s allegations were made in good faith, one could argue that Semcon cannot have purposefully directed its enforcement activities at California if it in fact believed the allegedly infringing entities to have been residents of the forum in which the complaint was filed. Either way, Semcon’s lawsuits against these entities in a Texas forum do not support personal jurisdiction over Semcon here. 6 3:18-CV-1575-CAB-MDD 1 flimsier. Kyocera offers no authority for the far-fetched proposition that Semcon directed 2 enforcement activities at California because it has filed lawsuits in Texas against other 3 alleged infringers who are not California residents themselves, but have affiliates in 4 California. Meanwhile, Semcon’s use of a process server with a California office to serve 5 a complaint in a Texas lawsuit on a foreign company is no more relevant to the 6 determination of personal jurisdiction than if Semcon used a computer manufactured by a 7 California company to draft the complaint itself. Finally, Semcon presents unrebutted 8 evidence that the mediations occurred in California solely as a result of the schedule of the 9 Texas-based mediator who had mediated several of Semcon’s other enforcement actions 10 concerning the Patents in Texas. [Doc. Nos. 12-3 at 3; Doc. No. 12-4.] Such tenuous 11 connections to California do not tip the scales in Kyocera’s favor. 12 In sum, the California activities on which Kyocera relies do not support a finding 13 that Semcon has ever purposefully availed itself of the privilege of conducting activities 14 within California, thus invoking the benefits and protections of California laws. See 15 Avocent, 552 F.3d at 1329. All of the contacts with California identified by Kyocera are 16 merely ancillary to enforcement actions taken by Semcon in Texas. Thus, Kyocera has not 17 satisfied its burden of establishing personal jurisdiction over Semcon. 18 IV. 19 For the foregoing reasons, Semcon is not subject to personal jurisdiction in 20 California for the declaratory relief claims asserted in the complaint.3 Accordingly, Conclusion 21 22 In a footnote, Kyocera half-heartedly requests jurisdictional discovery based on unspecified “information and belief” that Semcon may have license agreements with California-based entities. Ninth Circuit law applies to the issue of jurisdictional discovery. Autogenomics, Inc. v. Oxford Gene Tech. Ltd., 566 F.3d 1012, 1021 (Fed. Cir. 2009). Under Ninth Circuit law, “it is not necessarily an abuse of discretion to reject a request for jurisdictional discovery” when no formal motion is made, as is the case here. Id. at 1022. Regardless, Kyocera fails to justify the need for such discovery. “Discovery may be appropriately granted where pertinent facts bearing on the question of jurisdiction are controverted or where a more satisfactory showing of the facts is necessary.” Boschetto v. Hansing, 539 F.3d 1011, 1020 (9th Cir. 2008) (quoting Data Disc., Inc. v. System Tech. Assoc., Inc., 557 F.2d 1280, 1285 n.1 (9th Cir. 1977)). However, “where a plaintiff’s claim of personal jurisdiction appears to be both attenuated and based on bare allegations in the face of specific denials made by the defendants, the Court need not permit even limited discovery....” 3 23 24 25 26 27 28 7 3:18-CV-1575-CAB-MDD 1 Semcon’s motion to dismiss pursuant to Federal Rule of Civil Procedure 12(b)(2) is 2 GRANTED, and this case is DISMISSED without prejudice to refiling in a jurisdiction 3 where Semcon is subject to personal jurisdiction.4 4 5 It is SO ORDERED. Dated: October 19, 2018 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Pebble Beach Co. v. Caddy, 453 F.3d 1151, 1160 (9th Cir. 2006) (quoting Terracom v. Valley Nat. Bank, 49 F.3d 555, 562 (9th Cir.1995)). In light of the attenuated facts and allegations on which Kyocera relies for its arguments of personal jurisdiction, the Court is not persuaded that jurisdictional discovery is warranted based on Kyocera’s unsupported speculation as to what such discovery could reveal. 4 In light of this holding, Semcon’s motion to dismiss based on the first to file rule is DENIED AS MOOT. 8 3:18-CV-1575-CAB-MDD
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