United States District Court, N.D. California, San Jose Division
ORDER AUTHORIZING DISCOVERY RE SPECIFIC PERSONAL
JURISDICTION; STAYING ALL OTHER DISCOVERY; TERMINATING
DEFENDANT'S MOTION TO DISMISS AND PLAINTIFFS' MOTION
FOR ANTI-SUIT INJUNCTION RE: DKT. NOS. 18, 40
J. DAVILA UNITED STATES DISTRICT JUDGE
Lenovo (United States) Inc. (“Lenovo US”) and
Motorola Mobility LLC (“Motorola, ” or
collectively with Lenovo US, “Plaintiffs”)
initiated this action against Defendant IPCom GmbH & Co.,
KG (“IPCom” or “Defendant”) for
breach of contract; declaratory judgment; antitrust
monopolization in violation of Section 2 of the Sherman Act;
and declaratory judgment of non-infringement of U.S. Patent
No. 6, 307, 844 and No. 6, 920, 124. The suit is predicated
on Plaintiffs' allegation that IPCom failed to offer
Plaintiffs a license to its alleged standard essential
patents (“SEPS”) relevant to the 2G, 3G, and 4G
cellular standards on fair, reasonable, and
non-discriminatory (“FRAND”) terms and
conditions. Comp. ¶ 1.
a company organized and existing under the laws of Germany,
moves to dismiss for lack of personal jurisdiction pursuant
to Federal Rule of Civil Procedure 12(b)(2). Dkt. No. 18.
Plaintiffs move for an anti-suit injunction. Dkt. No. 40.
More specifically, Plaintiffs request that this Court (1)
enjoin IPCom from prosecuting the patent infringement action
IPCom filed in the United Kingdom against Plaintiffs'
U.K. affiliates; and (2) enjoin IPCom from instituting
against Plaintiffs, Plaintiffs' affiliates, or any of
their customers any action alleging infringement of
IPCom's claimed 2G, 3G and/or 4G SEPs during the pendency
of this action. The motions were heard on November 14,
2019. For the reasons set forth below, the parties are
granted leave to conduct jurisdictional discovery, after
which the parties may renew their respective motions.
Lenovo U.S. is a corporation organized under the laws of the
State of Delaware, with its principal place of business in
Morrisville, North Carolina. Compl. ¶ 12. Plaintiff
Motorola is an affiliate of Lenovo U.S. organized under the
laws of the State of Delaware, with its principal place of
business in Chicago, Illinois. Id. ¶ 13. Lenovo
US's parent, Lenovo Group Limited (“Lenovo
China”), acquired Motorola. Id.
are leading providers of wireless devices, including tablets,
laptops, and mobile phones. Id. ¶ 1. Many of
Plaintiffs' products rely on cellular connectivity.
Id. ¶ 2. Cellular connectivity requires the use
of widely adopted cellular standards-such as second
generation (“2G”), third generation
(“3G”), and/or fourth generation
(“4G”)-adopted by various standard setting
organizations (“SSOs”). Id. The European
Telecommunications Standards Institute (“ETSI”)
is one such SSO. Id.
claims to own patents that have been declared essential to
the cellular standards adopted by ETSI and implemented by
Plaintiffs' products. Id. ¶ 3. As such,
IPCom's patents are encumbered under ETSI's
Intellectual Property Rights (“IPR”) Policies,
and thus must be licensed on FRAND terms and conditions to
all potential implementers of the standards, such as
is a company organized and existing under the laws of
Germany, with its principal place of business in Pullach,
Germany. Id. ¶ 15. IPCom is
“partnered” with United States company Karols
Development Co LLC (id. ¶ 18) and Fortress
Investment Group (Rodewald Decl. Ex. 30).
is a member of ETSI and has promised to license its
intellectual property rights related to all ETSI
standards made by it and/or its affiliates on FRAND
terms and conditions. Id. ¶ 4. A majority of
the patents under IPCom's ownership or control were
obtained from Robert Bosch GmbH (“Bosch”) or
Hitachi Ltd. (“Hitachi”), both of whom promised
to license their alleged SEPs on FRAND terms and conditions.
Id. As a successor-in-interest to those patents,
IPCom is obligated under the FRAND commitments made by both
Bosch and Hitachi. Id. Plaintiffs are third-party
beneficiaries of IPCom's FRAND promises to ETSI.
Id. ¶ 6.
breached the promises made to ETSI by failing to offer a
license to Plaintiffs on FRAND terms and conditions.
Id. ¶ 7. Moreover, IPCom's promises to
license essential patents on FRAND terms and conditions were
false. Id. Plaintiffs are ready and willing to
license IPCom's SEPs, but IPCom's royalty demands for
a patent license violate its FRAND commitments. Id.
¶ 8. IPCom is attempting to seek supra-competitive
royalty rates for a license to its 2G, 3G, and 4G patents;
demanding Plaintiffs pay royalties for patents that are not
essential to the ETSI standards; and demanding Plaintiffs pay
royalties for expired patents or patents that will expire
during the course of the proposed license. Id.
Further, in an attempt to coerce Plaintiffs to enter into a
license that is not on FRAND terms and conditions, IPCom told
at least one of Plaintiffs' customers that its sales of
Plaintiffs' products “put it at serious legal and
financial risk.” Id. ¶ 9.
Rule of Civil Procedure 12(b)(2) allows a party to challenge
the court's personal jurisdiction over a party. “In
opposition to a defendant's motion to dismiss for lack of
personal jurisdiction, the plaintiff bears the burden of
establishing that jurisdiction is proper.”
Boschetto v. Hansing, 539 F.3d 1011, 1015 (9th Cir.
2008) (citing Sher v. Johnson, 911 F.2d 1357, 1361
(9th Cir. 1990)). If a court decides the motion without an
evidentiary hearing, “the plaintiff need only make a
prima facie showing of the jurisdictional facts.”
Id. (quoting Caruth v. Int'l
Psychoanalytical Ass'n, 59 F.3d 126, 127-28 (9th
Cir. 1995)). In such cases, the inquiry is whether the
plaintiff's pleadings and affidavits make a prima facie
showing of personal jurisdiction.” Schwarzenegger
v. Fred Martin Motor Co., 374 F.3d 797, 800 (9th Cir.
2004). Uncontroverted allegations in the plaintiff's
complaint must be taken as true, and any conflicts between
the parties over statements contained in affidavits must be
resolved in the plaintiff's favor. Id.
court's power to exercise jurisdiction over a party is
limited by both statutory and constitutional considerations.
First, a long-arm statute must confer jurisdiction over a
defendant. Pebble Beach Co. v. Caddy, 453 F.3d 1151,
1154-55 (9th Cir. 2006) (citing Fireman's Fund Ins.
Co. v. Nat'l Bank of Coops., 103 F.3d 888, 893 (9th
Cir. 1996)). California's long arm statute is coextensive
with the limits of due process. Daimler AG v.
Bauman, 571 U.S. 117, 125 (2014).
for a court to exercise personal jurisdiction over a
nonresident defendant consistent with due process, that
defendant must have “certain minimum contacts”
with the relevant forum such that the exercise of
jurisdiction “does not offend traditional notions of
fair play and substantial justice.'”
Schwarzenegger, 374 F.3d at 801 (quoting
Int'l Shoe Co. v. Washington, 326 U.S. 310, 316,
(1945); Asahi Metal Indus. Co. v. Super. Ct. of Cal.,
Solano Cnty., 480 U.S. 102, 109 (1987) (“[T]he
constitutional touchstone” of the determination whether
an exercise of personal jurisdiction comports with due
process “remains whether the defendant purposefully
established ‘minimum contacts' in the forum
State.”) (quoting Burger King Corp. v.
Rudzewicz, 471 U.S. 462, 474 (1985)).
the minimum contacts test, jurisdiction can be either
“general” or “specific.” Doe v.
Unocal Corp., 248 F.3d 915, 923 (9th Cir. 2001) (per
curiam), abrogated on other grounds by Daimler AG v.
Bauman, 571 U.S. 117, 134 S.Ct. 746, 187 L.Ed.2d 624
(2014). “A court may exercise specific jurisdiction
where the cause of action arises out of or has a substantial
connection to the defendant's contacts with the
forum.” Glencore Grain Rotterdam B.V. v. Shivnath
Rai Harnarain Co., 284 F.3d 1114, 1123 (9th Cir. 2002)
(citing Hanson v. Denckla, 357 U.S. 235, 251
(1958)). “Alternatively, a defendant whose contacts are
substantial, continuous, and systematic is subject to a
court's general jurisdiction even if the suit concerns
matters not arising out of his contact with the forum.”
Id. (citing Helicopteros Nacionales de Colombia,
S.A. v. Hall, 466 U.S. 408, 415 n.9 (1984)).
Federal Rule of Civil Procedure 4(k)(2)-Personal
Rule of Civil Procedure 4(k)(2) states:
(2) Federal Claim Outside State-Court Jurisdiction. For a
claim that arises under federal law, serving a summons or
filing a waiver of service establishes personal jurisdiction
over a defendant if:
(A) the defendant is not subject to jurisdiction in any
state's courts of general jurisdiction; and
(B) exercising jurisdiction is consistent with the United
States Constitution and laws.
Fed. R. Civ. P. 4(k)(2). Rule 4(k)(2) establishes personal
jurisdiction over a defendant who “is not subject to
jurisdiction in any state's courts of general
jurisdiction” so long as “exercising jurisdiction
is consistent with the United States Constitution and
laws.” See Touchcom, Inc. v. Bereskin &
Parr, 574 F.3d 1403, 1416 (Fed. Cir. 2009) (“Rule
4(k)(2) contemplates a defendant's contacts with the
entire United States, as opposed to the state in which the
district court sits.”) (internal quotations and
citations omitted). “[F]or a court to exercise personal
jurisdiction over a defendant under that rule, the
plaintiff's claim must arise under federal law, the
defendant must not be subject to jurisdiction in any
state's courts of general jurisdiction, and exercise of
jurisdiction must comport with due process.”
Touchcom, 574 F.3d at 1412. “The third
requirement under Rule 4(k)(2) - the due process analysis -
contemplates a defendant's contacts with the entire
United States, as opposed to the state in which the district
court sits.” Synthes (U.S.A.) v. G.M. Dos Reis Jr.
Ind. Com. de Equip. Medico, 563 F.3d 1285, 1295 (Fed.
argues that the Complaint contains no facts to support this
Court's exercise of personal jurisdiction over IPCom.
IPCom presents several undisputed facts to underscore its
lack of contacts with the United Sates. It is undisputed that
IPCom is a small company, having just six (6) employees, with
its sole place of business located in Germany. Suh Decl. in
Support of Defs.' Mot. to Dismiss ¶¶ 3-4.
Further, IPCom has never conducted business in the United
States. Id. ¶¶ 2-14. IPCom has never
employed anyone in the United States. Id. ¶ 5.
IPCom has also never owned or leased property in the United
States, and has never had a place of business here.
Id. ¶¶ 3, 7-8. Nor has IPCom ever paid
taxes in the United States. Id. ¶ 10. IPCom has
never sought to have its rights adjudicated by a court in the
United States other than when compelled to answer a single
complaint for declaratory judgment brought by an
infringer. Id. ¶¶ 14, 17-18.
represents that its contacts with the United States consist
solely of meetings in the United States with potential
licensees, written correspondence with United States
licensees, and telephone calls to and from the United States
related to license negotiations. IPCom's Mot. To Dismiss
3 (citing Suh Decl. ¶ 15). IPCom's meetings in the
United States have generally occurred only when specifically
requested or dictated by potential licensees, as is the case
with Lenovo China. Id.
acknowledging the facts above, Plaintiffs refrain from
arguing that this Court may exercise general jurisdiction
over IPCom. Instead, ...