The opinion of the court was delivered by: JEFFREY WHITE, District Judge
ORDER GRANTING MOTION TO DISMISS FOR LACK OF PERSONAL
JURISDICTION AND DENYING AS MOOT MOTION TO DISMISS FOR LACK OF
SUBJECT MATTER JURISDICTION AND MOTION TO TRANSFER
This matter comes before the Court upon consideration of the
motion to dismiss for lack of personal jurisdiction filed by
Defendant F&G Research, Inc. ("F&G"). Also before the Court are
F&G's motion to dismiss for lack of subject matter jurisdiction
and motion to transfer. In light of the Court's ruling on the
motion to dismiss for lack of personal jurisdiction, those
motions are DENIED AS MOOT.
On July 15, 2005, the Court heard oral argument on each of the
pending motions, granted Plaintiff Primax Electronic Ltd.'s
("Primax") request for discovery on the issue of personal
jurisdiction, and ordered supplemental briefing on that issue.
The parties' supplemental briefing now is complete, and the Court
concludes that no further oral argument is necessary as to that
motion.*fn1 See N.D. Civ. L.R. 7-1(b). Having considered the parties' pleadings, relevant legal
authority, the record in this case, and having had the benefit of
oral argument, the Court GRANTS the motion to dismiss for lack of
FACTUAL AND PROCEDURAL HISTORY
Primax is a Taiwanese corporation, with a principal place of
business in Taiwan. Although Primax is not a California
corporation, it has a wholly-owned subsidiary, Polaris
Electronics, Inc. in Pleasanton, California, and it does business
with a number of companies located in California, including
companies within the Northern District. (See Declaration of
Brian Yang, ¶¶ 2-3).*fn2 Primax's customers within the
United States are original equipment manufacturers ("OEMs").
(Id., ¶ 5.) These OEMs use Primax products but sell them under
their own brand names. (Id.)
F&G is a Florida corporation. It is undisputed that F&G has no
offices, telephone numbers, assets, employees or property in
California, and that F&G's sole business is licensing the patents
On or about February 14, 2005, through its counsel in Florida,
F&G sent a letter to Primax in Taiwan that states that Primax is
"offering for sale and selling a scrolling mouse which may
require a license under F&G's patent(s)." (Complaint, Ex. A.) The
letter further states that "[w]e would appreciate it if you
consider this an invitation to license F&G's patents at our
standard, one-time, fully paid upon, non-refundable license . . .
An indication of no interest will be interpreted by our client
that you wish to continue potentially infringing activities which
may subject your company to liability for patent infringement. We
therefore urge you to contact the undersigned immediately with
your comments or cease and desist from further sales of the
products in question and account to F&G for past sales." (Id.) F&G has also engaged in similar conduct with other companies in
California, including Logitech, Hewlett-Packard, and Kye
International.*fn3 (See, e.g., Declaration of Debra Nye in
Support of Plaintiff's Supplemental Brief Regarding Personal
Jurisdiction ("Nye Decl."), Exs. A (Response to Interrogatory No.
2), D (Cease and Desist Letters); Supplemental Declaration of
Debra Nye ("Nye Supp. Decl."), Ex. A.) The terms and conditions
of those licenses have not been made a part of the record.
On April 22, 2005, Primax initiated this declaratory relief
action against F&G.
A. Motion to Dismiss for Lack of Personal Jurisdiction
1. Primax bears the burden of establishing that the Court has
jurisdiction over F&G.
A defendant may move for dismissal for lack of personal
jurisdiction prior to trial. Fed.R.Civ.P. 12(b)(2). A court
can decide the motion on the basis of affidavits and declarations
submitted in response to the motion, or it can hold an
evidentiary hearing. See Electronics for Imaging, Inc. v.
Coyle, 340 F.3d 1344, 1349 (Fed. Cir. 2003).*fn4 Regardless
of the procedure a court chooses, a plaintiff bears the burden of
establishing a court's jurisdiction over a defendant.
If a court determines that it will resolve a motion to dismiss
for lack of personal jurisdiction "based on affidavits and other
written materials in the absence of an evidentiary hearing, a plaintiff need only to make a prima facie showing
that defendants are subject to personal jurisdiction."
Electronics for Imaging, 340 F.3d at 1349. In that situation, a
court must take uncontroverted allegations in a complaint as true
and resolve factual conflicts in a plaintiff's favor. Id.; see
also Akro Corp. v. Luker, 45 F.3d 1541, 1543 (Fed. Cir. 1995).
2. F&G must have certain minimum contacts with the forum
"Personal jurisdiction over an out-of-state defendant is
appropriate if the relevant state's long arm-statute permits the
assertion of jurisdiction without violating federal due process."
3D Systems, Inc. v. Aarotech Laboratories, Inc., 160 F.3d 1373,
1376-1377 (Fed. Cir. 1998); see also Akro, 45 F.3d 1541.
California's long arm statute is co-extensive with federal due
process requirements and, thus, the jurisdictional analyses under
California law and federal due process are the same. 3D
Systems, 160 F.3d at 1377. This Court must determine whether F&G
has "minimum contacts" with this forum such that the exercise ...