United States District Court, S.D. California
ORDER ON ESET SPOL'S MOTION TO DISMISS DOC. NO.
Cathy Ann Bencivengo, United States District Judge
the Court is Defendant ESET spol s.r.o.'s motion to
dismiss Plaintiff Finjan's complaint against it for
patent infringement for lack of personal jurisdiction under
Fed.R.Civ.P. 12(b)(2) and for failure to state a claim under
Fed.R.Civ.P. 12(b)(6). [Doc. No. 55.] Finjan filed an
opposition. [Doc. No. 63.] ESET spol filed a reply. [Doc. No.
65.] The Court heard argument on March 20, 2017. For the
reasons set forth on the record and summarized below the
motion is DENIED.
spol, headquartered in Bratislava in the Slovak Republic, is
the parent company of co-defendant ESET LLC. Finjan has
accused both ESET spol and ESET LLC of making, using, selling
and importing products that infringe, or inducing the
infringement, of six Finjan patents. In its complaint Finjan
alleges that ESET spol and ESET LLC both do sufficient
business in the Northern District of California to establish
minimum contacts for personal jurisdiction. ESET LLC, a
California corporation with its principal place of business
in San Diego does not dispute this general allegation. ESET
spol however does.
jurisdiction issues in patent cases are governed by Federal
Circuit law. The plaintiff bears the burden of making a
prima facie showing that a defendant is subject to
personal jurisdiction. The Court is required to resolve any
factual conflicts in the plaintiff's favor. See
Synthes (U.S.A.) v. G.M. Dos Reis Jr. Ind., 563 F.3d
1285, 1292 (Fed. Cir. 2009). Finjan contends that ESET
spol's minimum contacts with the United States are
sufficient to establish specific personal jurisdiction under
Rule 4(k)(2) of the Federal Rules of Civil Procedure.
4(k)(2) allows a court to exercise personal jurisdiction over
a defendant if: (1) the plaintiff's claim arises under
federal law, (2) the defendant is not subject to jurisdiction
in any state's courts of general jurisdiction, and (3)
the exercise of jurisdiction comports with due process.
Id. at 1293-94. It is undisputed in this case the
Plaintiff's claims for patent infringement arise under
federal law and that the Defendant is not subject to suit in
the courts of general jurisdiction of any state. The
Plaintiff must therefore establish the third requirement,
that the Defendant has affiliating contacts with the entire
United States sufficient to justify the exercise of personal
jurisdiction. Id. at 1295.
process requires only that in order to subject a defendant to
a judgment in personam, the defendant must have certain
minimum contacts with the forum such that the maintenance of
the suit does not offend traditional notions of fair play and
substantial justice. Int'l. Shoe Co. v.
Washington, 326 U.S. 319 316 (1945). To be subject to
specific jurisdiction, (1) the defendant must purposefully
direct its activities at residents of the forum, (2) the
claim must arise out of or relate to the defendant's
activities with the forum, and (3) assertion of personal
jurisdiction is reasonable and fair. A substantial connection
with a forum arising out of a single act can support
jurisdiction. Synthes, 563 F.3d at 1297.
provided evidence that ESET spol develops the software
products accused of infringement. It has registered numerous
U.S. trademarks and copyrights related to the accused
software. ESET spol is the registered owner and administrator
of the website eset.com. The accused software is advertised,
sold, and serviced through this website. U.S. consumer
queries to ESET spol's website, eset.com, are
automatically routed to ESET spol's North American
subsidiary ESET LLC. ESET LLC does not however operate its
own website. ESET LLC receives its consumer traffic through
the website owned and administered by ESET spol.
End-User license agreement for purchasers of the accused
software states it is “executed by and between ESET,
spol s.r.o., having its registered office at Einsteinova 24,
85101 Bratislava, Slovak Republic, registered in the
Commercial Register administered by Bratislava I District
Court, Section Sro, Entry No 3586/B, Business Registration
Number 31 333 535 or another company from the ESET
Group” and the buyer. The agreement provides no
specific identification of any other ESET company, such that
a buyer would have any understanding that he or she was
entering into a license agreement with any entity other than
ESET spol. ESET LLC uses this form of license and does not
provide a separate form for U.S. customers identifying ESET
LLC as the licensor.
conflicts in favor of Finjan, the Court finds that Finjan has
made a prima facie showing that ESET spol had
purposefully directed activities that relate to the claims at
issue to residents of the United States and has sufficient
contacts such that the exercise of jurisdiction in this case
over ESET spol is reasonable, under Rule 4(k)(2). The motion
to dismiss for lack of personal jurisdiction is denied.
regard to the request to dismiss for failure to state a claim
under Rule 12(b)(6), ESET spol is correct that the complaint
does not differentiate between ESET spol and ESET LLC
regarding the allegations of infringement. The Court
separately found in ESET LLC's motion to dismiss [Doc.
No. 105] that the subsequent infringement contentions and
election of claims served by Finjan generally resolved the
specificity concerns raised by the Defendants. Finjan contends
that ESET spol is liable for the direct and indirect
infringement of its patents through the importation of the
software and operation of the website. The Court finds the
allegations at this point in the litigation sufficiently
described to put ESET spol on notice of Finjan's claims.
The motion to dismiss for failure to state a claim is
spol is ordered to file an answer no later than April 3, 2017
in accordance with the Court's order issued at Doc. No.