Continental Automotive Systems, Inc. v. Avanci, LLC

          ORDER GRANTING MOTION TO TRANSFER VENUE RE: DKT. NO. 110

          LUCY H. KOH United States District Judge.

         Continental Automotive Systems, Inc., the Plaintiff in this case, seeks licenses for various standard essential patents associated with the 2G, 3G, and 4G cellular standards. Plaintiff believes the twelve defendants in this case have unlawfully conspired to deny such licenses to Plaintiff on fair, reasonable, and non-discriminatory (“FRAND”) terms, wherefore Plaintiff brings this multi-count suit. A subset of the defendants in this case have now moved to transfer the case to the Northern District of Texas pursuant to 28 U.S.C. § 1404(a). ECF No. 110. Having considered the parties' briefing, the relevant law, and the record in the case, the Court GRANTS the Motion to Transfer Venue.

         I. BACKGROUND

         A. Factual Background

         Because they are relevant to the Motion to Transfer Venue, the Court briefly summarizes the allegations in Plaintiff's First Amended Complaint (“FAC”).

         Plaintiff Continental Automotive Systems, Inc. is a Delaware corporation with its principal place of business in Auburn Hills, Michigan. FAC ¶ 16. Plaintiff is in the business of making automotive components, which it sells to car manufacturers. FAC ¶ 103. The car manufacturers, or “OEMs” as Plaintiff calls them, then assemble the components from Plaintiff and their other various suppliers into the finished car. FAC ¶ 103. As relevant here, Plaintiff produces telematics control units (“TCUs”), which offer various “telecommunications, infotainment, and safety features.” Id. ¶ 18. These TCUs engage in and rely upon cellular communications in order to function, which means they implement cellular communications standards. Id. ¶¶ 18, 70. Cellular communications standards are technical standards that facilitate communication and compatibility across different devices, providers, and geographies. Id. ¶¶ 70, 71. They are commonly identified by their “generation”-i.e., 1G, 2G, 3G, and 4G. Id. ¶¶ 70-76. Importantly, cellular communications standards are not mandated by law, but rather voluntarily adopted by members of the industry. Hence, industry groups called standard-setting organizations, or “SSOs” evolved to develop and manage these standards. Id. ¶ 71. Among the SSOs implicated in this case are the European Telecommunications Standards Institute (“ETSI”), the Alliance for Telecommunications Industry Solutions (“ATIS”), and the Telecommunications Industry Association (“TIA”). Id.

         Although standardization has benefits, it also has the potential for anticompetitive consequences. Id. at 77. That is because standards will often incorporate patented technology, known as standard essential patents (“SEPs”). The holders of those SEPs-who are typically members of the SSOs-would then be able to charge exorbitant royalties from or refuse to license to certain users of the standards. Id. ¶ 123. In other words, each SEP holder acquires monopoly power when their patented technologies become a standard that others must use in order to participate in the cellular communications industry. Id. at 121. To prevent these eventualities, SSOs have intellectual property right (“IPR”) policies to which their members must adhere. Id. ¶ 79, 122. According to Plaintiff, the IPR policies of the SSOs involved in this case require SSO members “to commit to license their asserted SEPs to firms implementing the standard on [fair, reasonable, and non-discriminatory (“FRAND”)] terms and conditions.” Id. ¶ 79. Plaintiff believes these IPR policies also “require a SEP holder to license its alleged SEPs on FRAND terms and conditions to any implementer within a given supply chain that uses the standards.” Id. ¶ 20.

         In the instant case, Plaintiff sues various companies who hold SEPs associated with the 2G, 3G, and 4G standards: Nokia Corporation (“Nokia Corp.”); Nokia of America Corporation (“Nokia America”); Nokia Solutions and Networks U.S. LLC (“Nokia Solutions”); Nokia Solutions and Networks Oy (“Nokia Solutions Oy”); Nokia Technologies Oy; Conversant Wireless Licensing SARL (“Conversant SARL”); Optis UP Holdings, LLC (“Optis UP”); Optis Cellular Technology, LLC (“Optis Cellular”); Optis Wireless Technology, LLC (“Optis Wireless”); and Sharp Corporation (“Sharp”). Id. ¶¶ 87-97. Plaintiff alleges that these companies- referred to collectively by Plaintiff as “Defendant Licensors”-have committed to grant licenses to their SEPs on FRAND terms and conditions, in accordance with the IPR policies of the various SSOs of which they are members. Id. ¶¶ 87, 89, 92.

         In addition, Plaintiff sues Avanci, LLC and Avanci Platform International Limited (“Avanci PIL”), referred to collectively by Plaintiff as “Avanci.” Id. at 1. According to Plaintiff, Avanci is a “licensing platform” that “acts as a licensing agent for a large group of patent owners and traditional patent licensors, ” including Defendant Licensors. Id. ¶ 107. Suppose a company manufactures a product that implements a cellular communications standard. Id. ¶¶ 111-12. Instead of separately obtaining licenses from each of the SEP holders, that company could obtain a collective license from Avanci to all of the SEPs held by Avanci's members. Id. The customer would pay a “flat” royalty that varied with the type of product implementing the standard, such as a car. Id. ¶ 112. Plaintiff acknowledges that pools or platforms like Avanci “may be efficient by reducing the transactional costs of negotiating separate licenses with individual licensors.” Id. ¶ 115. However, Plaintiff believes Avanci is a “collusive vehicle” formed by SEP holders who “wanted to preserve their ability to continue to extract supra-FRAND licensing revenues.” Id. at 28, ¶ 111. Plaintiff also alleges that not all of the patents included in Avanci's collective license are in fact “essential” for practicing cellular communications standards. Id. ¶ 116-17.

         According to Plaintiff, there are three main components to the scheme. First, Avanci's members (including Defendant Licensors) allegedly agreed to “collectively license their asserted SEPs on non-FRAND terms.” Id. ¶ 11. Second, Plaintiff believes Avanci's members entered into a “multilateral agreement . . . to offer a collective license to its members' SEPs only to manufacturers at the very end of a supply chain, like car OEMs” and not to upstream suppliers like Plaintiff. Id. ¶ 112. In Plaintiff's view, the purpose of this second agreement is to facilitate Avanci's ability to charge supra-FRAND royalties. That is, Avanci's high royalties “could not be sustained if charged directly to suppliers in the supply chain with much smaller prices and margins.” Id. ¶¶ 10, 113. Only manufacturers of expensive end-products with greater margins- such as OEMs-would be willing to pay Avanci's royalties.

         Third, to disincentivize individual Avanci members from competing “with each other or with Avanci in offering competitive SEP license terms, ” Avanci's members are allegedly retrained through an express agreement “from offering a license in competition with an Avanci licensing program in any manner that would hinder Avanci's ability to collect its full stated supra-FRAND royalty” on the collective license. Id. ¶ 129. The problem, according to Plaintiff, is that a fully “exhaustive” license-i.e., a license under which a supplier may “pass through” rights to its customers-would almost always impair Avanci's ability to collect its ordinary royalty on a collective license. Id. ¶¶ 129, 133. Thus, although each Avanci member is technically free to sell individual licenses to suppliers outside of the Avanci platform, “it is practically impossible for members to offer individual licenses to suppliers that are fully exhaustive.” Id. ¶ 129.

         In support of Plaintiff's allegations regarding the workings of the Avanci conspiracy, the FAC describes Plaintiff's attempts to obtain licenses to Defendant Licensors' SEPs. First, Plaintiff sought to obtain a collective license from Avanci. Plaintiff alleges that, in keeping with the above-described agreements, Avanci indicated “it would only seek authorization from its members to license to Continental if Continental agreed in advance to pay the same inflated rates Avanci demands from the car OEMs.” Id. ¶ 114. In other words, Avanci allegedly required Plaintiff to pay the flat royalty for a car, even though Plaintiff only sought to produce one component of a car (i.e., TCUs).

         Plaintiff then contacted each of the Defendant Licensors individually in an effort to obtain licenses to their respective SEPs. Plaintiff alleges that they all “refused to offer a direct license on FRAND terms.” Id. ¶ 139. Thus, Plaintiff has been unable to obtain licenses to the relevant SEPs on FRAND terms.

         Moreover, Plaintiff further alleges that it is harmed by Avanci's charging of supra-FRAND royalties to car OEMs, which are Plaintiff's customers. According to Plaintiff, Plaintiff and other upstream suppliers in the automotive supply chain actually “bear the artificially elevated cost of Defendants' non-FRAND royalties because the OEMs typically demand indemnity of such licensing costs as a condition of purchasing” from those suppliers. Id. ¶ 11. That is, Plaintiff's purchase agreements with car OEMs contain “indemnification clauses” obliging Plaintiff “to indemnify the respective OEM for any royalties the OEM might pay for using and/or selling” Plaintiff's TCUs as part of a vehicle. Id. at 105.

         In Plaintiff's view, Defendant Licensors' actions contravene the commitments that Defendant Licensors made pursuant to the IPR policies of the SSOs of which they are members. For instance, Plaintiff believes Defendant Licensors have reneged upon their obligation “to license their SEPs on FRAND terms and conditions.” Id. ¶ 86. Plaintiff further alleges that the IPR policies of the relevant SSOs “require a SEP holder to license its alleged SEPs on FRAND terms and conditions to any implementer within a given supply chain that uses the standards, and not merely to the manufacturers of “end-products.” Id. ¶¶ 5, 80. In addition, Plaintiff believes the above-described actions of Avanci and Defendant Licensors amount to unlawful anticompetitive conduct. For instance, Plaintiff alleges that Defendants' collusive activity has permitted them to “illegally maintain[] the monopoly power they initially obtained when their patented technologies became standardized.” Id. ¶ 126. Plaintiff also believes that the bundling of non-essential patents with true SEPs in Avanci's collective licenses constitutes “price fixing and/or illegal tying.” Id. ¶ 116.

         B. Procedural History

         Plaintiff initially filed suit on May 10, 2019. ECF No. 1. On July 23, 2019, Plaintiff filed the operative First Amendment Complaint (“FAC”). ECF No. 97. The FAC contains seven causes of action: (1) breach of contract; (2) promissory estoppel; (3) declaratory judgment; (4) violation of 15 U.S.C. § 1, Section 1 of the Sherman Act; (5) unlawful monopolization in violation of 15 U.S.C. § 2, Section 2 of the Sherman Act; (6) conspiracy to monopolize in violation of 15 U.S.C. § 2, Section 2 of the Sherman Act; and (7) violation of the California Unfair Competition Law (the “UCL”), Cal. Bus. & Prof. Code §§ 17200 et seq. There are currently twelve defendants in the case: (1) Avanci, LLC; (2) Avanci PIL; (3) Nokia Corp.; (4) Nokia America; (5) Nokia Solutions; (6) Nokia Solutions Oy; (7) Nokia Technologies Oy; (8) Conversant SARL; (9) Optis UP; (10) Optis Cellular; (11) Optis Wireless; and (12) Sharp (collectively, “Defendants”).

         On July 31, 2019, a subset of Defendants-specifically, Avanci, LLC; Nokia Corp.; Nokia America; Nokia Solutions; Nokia Solutions Oy; Nokia Technologies Oy; and Conversant SARL (the “Moving Defendants”)-moved to transfer the case to the United States District Court for the Northern District of Texas pursuant to 28 U.S.C. § 1404(a). ECF No. 110 (“Mot.”). Defendants Optis UP, Optis Cellular, Optis Wireless (the “Optis Entities”), Avanci PIL, and Sharp do not join in the motion because they each have pending motions seeking to be dismissed from the case. ECF No. 174 at 1 n.1. However, the Optis Entities have stated that in the event “the Court determines to transfer the case while the Optis entities are still part of the case, the Optis Entities agree to the requested transfer to the jurisdictions identified in the motion.” ECF No. 136 at 12 n.3. Avanci PIL and Sharp Corporation have likewise represented that they do not oppose transfer. ECF No. 174 at 1 n.1.

         Plaintiff opposed the motion to transfer on August 28, 2019, ECF No. 157, and the Moving Defendants replied on September 13, 2019, ECF No. 174.

         Also pending before the Court is Defendants' consolidated Motion to Dismiss, which was filed on August 30, 2019. ECF No. 162. That motion has been fully briefed. ECF Nos. 182, 193.

         II. ORDER OF ANALYSIS

         At the outset, the Court notes that Defendants' consolidated Motion to Dismiss raises, inter alia, several jurisdictional challenges. First, all Defendants move to dismiss for lack of Article III standing. ECF No. 162 at 4. Second, Defendants Nokia Corp., Conversant SARL, Avanci PIL, and the Optis Entities move to dismiss for lack of personal jurisdiction, though Conversant SARL moves without stating any argument. Id. at 23-24, 28. Third, Sharp moves to dismiss for insufficient service of process. Id. at 26. A motion to dismiss for insufficient service of process is a jurisdictional challenge because a court lacks jurisdiction if there has been insufficient service of process. United States v. 4268 Los Angeles Ave. Simi Valley California 93063, 672 Fed.Appx. 770, 770 (9th Cir. 2017). Accordingly, before proceeding to the merits of the motion to transfer, the Court first explains why it need not resolve Defendants' various jurisdictional challenges.

         It is well-established that “jurisdiction generally must precede merits in dispositional order.” Ruhrgas AG v. Marathon Oil Co., 526 U.S. 574, 577 (1999). It is equally clear, however, that “[j]urisdiction is vital only if the court proposes to issue a judgment on the merits.” Sinochem Int'l Co. v. Malaysia Int'l Shipping Corp., 549 U.S. 422, 431 (2007). As the U.S. Supreme Court held in Sinochem, a dismissal on the ground of forum non conveniens is not a judgment on the merits. Id. at 432. Rather, “it is a determination that the merits should be adjudicated elsewhere.” Id. The same is true of a transfer pursuant to 28 U.S.C. § 1404(a), which “is merely a codification of the doctrine of forum non conveniens for the subset of cases in which the transferee forum is within the federal court system.” Atl. Marine Const. Co. v. U.S. Dist. Court for W. Dist. of Texas, 571 U.S. 49, 60 (2013). “A district court therefore may dispose of an action by a forum non conveniens dismissal, ”-or transfer a case pursuant to § 1404(a)-“bypassing questions of subject-matter and personal jurisdiction, when considerations of convenience, fairness, and judicial economy so warrant.” Sinochem, 549 U.S. at 432; accord Pub. Employees' Ret. Sys. of Mississippi v. Stanley, 605 F.Supp.2d 1073, 1075 (C.D. Cal. 2009) (citing Sinochem for the proposition that “[a] decision to transfer for inconvenient forum is not a decision on the merits and therefore does not require a finding of jurisdiction.”). After all, the purpose of § 1404(a) is to “prevent the waste of time, energy, and money and to protect litigants, witnesses, and the public against unnecessary inconvenience and expense.” Van Dusen v. Barrack, 376 U.S. 612, 616 (1964). Therefore, “where subject-matter or personal jurisdiction is difficult to determine, and forum non conveniens considerations weigh heavily in favor of dismissal, the court properly takes the less burdensome course.” Sinochem, 549 U.S. at 436.

         Here, the jurisdictional challenges in Defendants' consolidated Motion to Dismiss are complex and may require the Court to look beyond the pleadings. For instance, Defendants' contention that Plaintiff lacks Article III standing is not a straightforward issue of law. Instead, the propriety of standing appears to turn in part on factual disputes, wherefore Defendants have submitted several affidavits in support of their motion. See Savage v. Glendale Union High Sch., Dist. No. 205, Maricopa Cty., 343 F.3d 1036, 1040 n.2 (9th Cir. 2003) (“Once the moving party has converted the motion to dismiss into a factual motion by presenting affidavits or other evidence properly brought before the court, the party opposing the motion must furnish affidavits or other evidence necessary to satisfy its burden of establishing subject matter jurisdiction.”). Indeed, considering the complexity of the standing issues, further briefing or jurisdictional discovery may be necessary.

         Sharp's motion to dismiss for insufficient service of process is similarly complex, as it appears to turn in part on the factual relationship between Sharp and its U.S. subsidiary. ECF No. 162 at 26-27; ECF No. 182 at 29; ECF No. 193 at 15. Judicial economy and fairness are therefore disserved by continuing litigation in the Northern District of California.

         Regarding the challenges to personal jurisdiction, only four of the twelve Defendants argue that this Court lacks personal jurisdiction over them. Deferring transfer of the case in order to resolve these defendants' objections would saddle the other defendants with unnecessary expense and delay. As Plaintiff's FAC alleges a conspiracy amongst all the Defendants, severance of the case would be inappropriate. See, e.g., Anticancer, Inc. v. Pfizer Inc., No. 11CV107 JLS RBB, 2012 WL 1019796, at *1 (S.D. Cal. Mar. 26, 2012) (stating that severance should not be used “to separate an essentially unitary problem”).

         For these reasons-and because, as discussed below, the Court finds the motion to transfer to be meritorious-the Court need not reach Defendants' jurisdictional challenges.

         III. LEGAL STANDARD

         A motion to transfer venue from one district to another is governed by 28 U.S.C. § 1404(a). That statute states: “For the convenience of parties and witnesses, in the interest of justice, a district court may transfer any civil action to any other district or division where it might have been brought.” 28 U.S.C. § 1404(a). Generally, the party seeking transfer bears the burden of showing that transfer is appropriate.^[1] Jones v. GNC Franchising, Inc., 211 F.3d 495, 499 (9th Cir. 2000). Under the plain text of the statute, the moving party must make two showings in order to justify transfer. First, the transferee forum must be one in which the case “might have been brought.” Hoffman v. Blaski, 363 U.S. 335, 344 (1960). “In determining whether an action ‘might have been brought' in a district, the court looks to whether the action initially could have been commenced in that district.” Hatch v. Reliance Ins. Co., 758 F.2d 409, 414 (9th Cir. 1985).

         Second, provided the case could have been brought in the proposed transferee forum, the movant must persuade the court that considerations of “convenience of parties and witnesses” and “the interest of justice” weigh in favor of transfer. Earth Island Inst. v. Quinn, 56 F.Supp.3d 1110, 1117 (N.D. Cal. 2014). The Ninth Circuit has identified a number of specific but non-exhaustive factors which “the court may consider” in analyzing those overarching statutory considerations: “(1) the location where the relevant agreements were negotiated and executed, (2) the state that is most familiar with the governing law, (3) the plaintiff's choice of forum, (4) the respective parties' contacts with the forum, (5) the contacts relating to the plaintiff's cause of action in the chosen forum, (6) the differences in the costs of litigation in the two forums, (7) the availability of compulsory process to compel attendance of unwilling non-party witnesses, . . . (8) the ease of access to sources of proof, ” (9) “the presence of a forum selection clause, ” if any; and (10) “the relevant public policy of the forum state, if any.” Jones, 211 F.3d at 498-99. A district court is not restricted to the pleadings on a motion transfer and may consider, inter alia, “undisputed facts supported by affidavits, depositions, stipulations, or other relevant documents.” FastCap, LLC v. Snake River Tool Co., LLC, No. 15-CV-02764-JSC, 2015 WL 6828196, at *2 (N.D. Cal. Nov. 6, 2015). At all events, § 1404(a) affords the court significant discretion to transfer the case based on an “individualized, case-by-case consideration of convenience and fairness.” Stewart Org., Inc. v. Ricoh Corp., 487 U.S. 22, 29 (1988) (quoting Van Dusen, 376 U.S. at 622).

         IV. DISCUSSION

         In the Motion to Transfer, the Moving Defendants seek to transfer this case to the Northern District of Texas. As set forth below, the Court finds that the case “might have been brought” in the Northern District of Texas and that convenience and the interest of justice favor transfer.

         A. The Instant Case “Might Have Been Brought” in the Northern District of Texas

         “To find that the action could have been brought in the transferee district, the Court must be satisfied that the transferee district has personal jurisdiction over all of the Defendants and that venue would be proper in that District.” Ponomarenko v. Shapiro, 287 F.Supp.3d 816, 834 (N.D. Cal. 2018); see Hoffman, 363 U.S. at 343-44 (agreeing with respondents that if “the courts of [the transferee] district lacked venue over the action and ability to command jurisdiction over the defendants, ” the transferor court “was without power to transfer it to that district”). Whether a case “might have been brought” is determined based on “the posture of the case at the time of filing in the transferor district.” A. J. Indus., Inc. v. U.S. Dist. Court for Cent. Dist. of California, 503 F.2d 384, 386 (9th Cir. 1974).

         Plaintiff does not address-and so apparently does not dispute-the Moving Defendants' contention that the instant action could have been brought in the Northern District of Texas. As set out below, the Court agrees that the Northern District of Texas could exercise personal jurisdiction over all Defendants and that venue would be proper in the Northern District of Texas.

         1. The Northern District of Texas Could Exercise Personal Jurisdiction over Defendants

         There are two types of claims in the FAC: (1) federal antitrust claims, and (2) state law claims, including Plaintiff's claim for declaratory judgment. The Court analyzes each in turn.

         a. Nationwide Personal Jurisdiction over the Federal Antitrust Claims

         Plaintiff brings three claims for violations of the Sherman Act. In general, a district court may exercise personal jurisdiction over a defendant “if a rule or statute authorizes it to do so and the exercise of such jurisdiction comports with the constitutional requirement of due process.” Myers v. Bennett Law Offices, 238 F.3d 1068, 1072 (9th Cir. 2001) (internal quotation marks omitted); see Fed. R. Civ. P. 4(k)(1)(C). As for statutory authorization, Section 12 of the Clayton Act provides for personal jurisdiction in antitrust suits against corporate defendants as follows:

Any suit, or proceeding under the antitrust laws against a corporation may be brought not only in the judicial district whereof it is an inhabitant, but also in any district wherein it may be found or transacts business; and all process in such cases may be served in the district of which it is an inhabitant, or wherever it may be found.

15 U.S.C. § 22 (emphasis added); see also BNSF Ry. Co. v. Tyrrell, 137 S.Ct. 1549, 1555 (2017) (explaining that “Congress' typical mode of providing for the exercise of personal jurisdiction has been to authorize service of process” and giving 15 U.S.C. § 22 as an example). As the Ninth Circuit has held, this provision provides for nationwide personal jurisdiction-i.e., personal jurisdiction in any federal district court. Go-Video, Inc. v. Akai Elec. Co., 885 F.2d 1406, 1413 (9th Cir. 1989) (affirming that “since process, under § 12, could be served anywhere in the country (indeed anywhere in the world), ” personal jurisdiction “could be obtained in any judicial district in the United States”) Section 12 thus provides statutory authorization for personal jurisdiction in the Northern District of Texas.

         Turning to the due process component of personal jurisdiction, a defendant must have “minimum contacts” with the territorial jurisdiction of a court “such that the maintenance of the suit does not offend ‘traditional notions of fair play and substantial justice.'” Walden v. Fiore, 571 U.S. 277, 283 (2014) (quoting Int'l Shoe Co. v. Washington, 326 U.S. 310, 316 (1945)). The Ninth Circuit has “held that the relevant forum with which a defendant must have ‘minimum contacts' in a suit brought under Section 12 of the Clayton Act is the United States, ” rather than a particular state. Action Embroidery Corp., 368 F.3d at 1180; accord FTC v. Americans for Fin. Reform, 720 Fed.Appx. 380, 383 (9th Cir. 2017) (applying national contacts analysis). The question at hand is therefore whether the Defendants have sufficient minimum contacts with the United States as whole to establish either specific or general jurisdiction.

         At the outset, the Court notes that several of the Defendants (Avanci, LLC; Nokia America; Nokia Solutions; Optis Wireless; Optis Cellular; and Optis UP) are incorporated in the United States and have their principal places of business in the United States. FAC ¶¶ 20, 28-29, 44-46. These defendants are indisputably “at home” in the United States, such that general jurisdiction is proper. See Daimler AG v. Bauman, 571 U.S. 117, 137 (2014) (“With respect to a corporation, the place of incorporation and principal place of business are paradigm bases for general jurisdiction.”); see Action Embroidery Corp., 368 F.3d at 1180 (finding nationwide minimum contacts for “a Virginia professional corporation operating in the United States”).

         Without addressing whether the remaining Defendants' contacts with the United States justify general jurisdiction, the Court finds that, at the very least, specific jurisdiction is proper over all Defendants. “Under specific jurisdiction, a court may assert jurisdiction for a cause of action that arises out of the defendant's forum-related activities.” Yahoo! Inc. v. La Ligue Contre Le Racisme Et L'Antisemitisme, 433 F.3d 1199, 1205 (9th Cir. 2006). The Ninth Circuit has set forth the following “three-part test ...