United States District Court, C.D. California
VOXX INTERNATIONAL CORP.; and ROSEN ENTERTAINMENT SYSTEMS, LLP, Plaintiffs,
JOHNSON SAFETY, INC., Defendant.
ORDER GRANTING DEFENDANT'S MOTION TO DISMISS
D. WRIGHT, II UNITED STATES DISTRICT JUDGE.
case is an action for patent infringement brought by
Plaintiff Voxx International Corporation (“Voxx”)
and Rosen Entertainment Systems, LLP (“Rosen”)
against Defendant Johnson Safety, Inc.
(“Johnson”). (First Am. Compl.
(“FAC”) ¶¶ 1-4, ECF No. 24.) The case
originated in the Southern District of Indiana. (See
id.) While the case was in that district, Johnson filed
a motion to dismiss some of Voxx's claims and to transfer
the case to the Central District of California. (ECF No. 31.)
The Indiana court granted Johnson's motion to transfer
and transferred the case to this Court on January 17, 2017.
(ECF No. 47.) Johnson's motion to dismiss remained
pending after the transfer. (See id.) For the
reasons discussed below, the Court GRANTS
claims that Johnson's products infringe seven patents.
(FAC ¶¶ 19-46.) The products involved in this
suit-both the patented products and the accused products-are
all models of video systems for vehicles. Voxx owns three of
the asserted patents, and Rosen owns the other four but
licenses them to Voxx (“the Rosen Patents”).
(See id.) Voxx states in the FAC that it joins Rosen
as a party plaintiff because “[i]t is possible that
[Johnson] would be exposed to suit from Rosen if not joined
herein.” (Id. ¶ 18.)
alleges that it is the “exclusive licensee” of
the Rosen Patents. (Id. ¶ 15.) Further, Voxx
claims that its exclusive license permits it to enforce the
Rosen Patents through litigation and to initiate suit in
Rosen's name or to join Rosen in such suit. (Id.
license in question is a Patent License Agreement
(“PLA”) between Voxx and Rosen. (See
PLA, Ex. A, ECF No. 32-1.) It gives Voxx a license of the
Rosen Patents exclusive to making and selling products for
original equipment manufacturers of vehicles
(“OEMs”) and suppliers who directly or indirectly
supply services or products to and for an OEM (“Tier
Suppliers”). (Id. at 1.) The license is
explicitly non-exclusive to and for entities other than OEMs
and Tier Suppliers. (Id.) In addition, Rosen retains
the right to sell products covered by the relevant patents to
Land Rover Corporation, USA (“Land Rover”).
(Id. at 4.)
asserts two bases for dismissing portions of Voxx's FAC:
(1) lack of standing as to the Rosen Patents; and (2) failure
to state a claim on which relief can be granted.
moves to dismiss Voxx's claims for lack of standing only
with respect to the Rosen Patents.
is a requirement in order for a federal court to hear a
plaintiff's claim. Lujan v. Defenders of
Wildlife, 504 U.S. 555, 555 (1992). Standing pertains to
subject matter jurisdiction and is thus properly raised in a
motion to dismiss under Federal Rule of Civil Procedure
12(b)(1). White v. Lee, 227 F.3d 1214, 1242 (9th
Cir. 2000). “In resolving a factual attack on
jurisdiction, the district court may review evidence beyond
the complaint without converting the motion to dismiss into a
motion for summary judgment.” Safe Air for Everyone
v. Meyer, 373 F.3d 1035, 1039 (9th Cir. 2004).
plaintiff bears the burden of demonstrating that it meets
both constitutional and prudential standing requirements.
Visioneer, Inc. v. KeyScan, Inc., 626 F.Supp.2d
1018, 1023 (N.D. Cal. 2009). Constitutionally, a party
invoking federal jurisdiction must show that it has suffered
an “injury in fact, ” defined as the invasion of
a legally protected interest which is (1) concrete and
particularized and (2) actual or imminent. Lujan,
504 U.S. at 560. The prudential requirement for standing is
that “the plaintiff generally must assert his own legal
rights and ...