`Case 4:18-cv-06185-HSG Document 48-3 Filed 03/15/19 Page 1 of 10
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`EXHIBIT A
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`
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`Case 4:18-cv-06185-HSG Document 48-3 Filed 03/15/19 Page 2 of 10
`Case 4:18-cv-06185-HSG Document 48-3 Filed 03/15/19 Page 2 of 10
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`fl
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`From:
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`Sent:
`To:
`Cc:
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`Lambrianakos, Peter
`
`Friday, October 26, 2018 5:26 PM
`Lavenue, Lionel; Rubino, Vincent J.
`Schulz, Bradford; AGIS-Lit
`
`Subject:
`Attachments:
`
`RE: AGIS Software Development, LLC v ZTE Corporation
`Kyocera—Semcon Dismissal.pdf
`
`Lionel,
`
`Please see the attached decision dismissing a case in the Southern District of California for lack of personal
`jurisdiction. The complaint filed by ZTE against the AGIS entities suffers from the same deficiencies, as well as a lack of
`case or controversy as to the AGIS defendants which do not own the patents. Accordingly, we request that ZTE
`immediately dismiss its complaint.
`If it refuses to do so and AGIS is forced to file a motion to dismiss, we will seek fees
`and costs from ZTE.
`
`Regards,
`
`Peter
`
`brownrudnick
`
`Peter Lambrianakos
`Partner
`Brown Rudnick LLP
`Seven Times Square
`New York, NY 10036
`T: 212.209.4813
`F: 212.938.2981
`gig mh ria na ko§@brg wnrudnick .com
`www.brownrudnick.com
`
`Please COlTSlLlC‘l
`
`the environment befom printing this .3 mail
`
`From: Lavenue, Lionel [mailto:lionel.lavenue@flnnegan.com]
`Sent: Tuesday, October 16, 2018 2:02 PM
`To: Rubino, Vincent J.
`Cc: Schulz, Bradford; AGIS-Lit
`Subject: RE: AGIS Software Development, LLC v ZTE Corporation
`
`Vincent -
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`Please advise whether you will accept service ofthe new Complaint on the AGIS entities in the NDCA.
`
`Regards,
`
`Lionel
`
`REDACTED NOT RELEVANT
`
`
`
`
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`Case 4:18-cv-06185-HSG Document 48-3 Filed 03/15/19 Page 3 of 10
`Case 4:18-cv-06185-HSG Document 48-3 Filed 03/15/19 Page 3 of 10
`ase 3:18—cv-01575-CAB-MDD Document 16 Filed
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`UNITED STATES DISTRICT COURT
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`SOUTHERN DISTRICT OF CALIFORNIA
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`KYOCERA INTERNATIONAL, INC.,
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`Case No.: 3: 18-CV-1575-CAB-MDD
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`V-
`SEMCON 1p, INC.,
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`Plaintiff,
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`ORDER GRANTING MOTION TO
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`DISMISS FOR LACK OF
`PERSONAL JURISDICTION
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`
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`Defendant.
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`[Doc. Nos. 12, 15]
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`Defendant Semcon IP, Inc. (“Semcon”) moves to dismiss the complaint of Plaintiff
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`Kyocera International, Inc. (“Kyocera”) for lack of personal jurisdiction and based on the
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`first to file rule. The motion has been fully briefed, and the Court deems it suitable for
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`submission without oral argument, so Semcon’s request for oral argument is DENIED. As
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`discussed below, because Semcon is not subject to personal jurisdiction in California for
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`Kyocera’s claims for declaratory relief of non-infringement of Semcon’s patents,
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`Semcon’s motion to dismiss is GRANTED.
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`I.
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`Background
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`The Court is dismissing this lawsuit for lack of personal jurisdiction over Semcon,
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`so only allegations and evidence relevant to that issue are included here. Kyocera seeks
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`declaratory relief of non—infringement of four patents held by Semcon: US. Patent Nos.
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`I
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`3:18-CV-1575-CAB-MDD
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`Case 4:18-cv-06185—HSG Document 48-3 Filed 03/15/19 Page 4 of 10
`ase 3:18-cv-01575—CAB-MDD Document 16 Filed
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`7,100,061; 7,596,708; 8,566,627; and 8,806,247 (collectively, the “Patents”). Semcon is a
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`Texas corporation with its principal place of business in Texas. With its motion, Semcon
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`includes a declaration from Semcon’s chief executive officer and sole employee stating
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`that: (a) he resides in New York; (b) Semcon is not registered to do business in California;
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`(c) Semcon does not have a registered agent for service of process in California; ((1)
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`Semcon does not have offices, employees, equipment, bank accounts or other assets in
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`1 2 3 4 5
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`6
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`7 California; (e) Semcon does not manufacture products, sell products, or solicit business in
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`8 California; (f) Semcon has never filed a lawsuit in California; and (g) Semcon’s only efforts
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`9
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`to enforce its rights under the Patents consist of lawsuits Semcon filed in the Eastern
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`10 District of Texas. [Doc. No. 12—2.]
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`11
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`Kyocera does not dispute any of these facts in its opposition. Nevertheless,
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`12 Kyocera’s complaint alleges that the Court has personal jurisdiction over Semcon for three
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`1 3
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`reasons:
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`1. Because Semcon has sought to enforce the Patents against at least two companies
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`that maintain their principal places of business in California [Doc. No. 1 at 11 7];
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`2. Because Semcon has sought to enforce the Patents against at least three foreign
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`companies whose subsidiaries have principal places of business in California
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`[1d,]; and,
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`3. Because Semcon retained the services of a process server with a place of business
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`in California to serve a complaint in another lawsuit concerning the Patents on a
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`Taiwanese entity.
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`[Id. at 1i 8.]
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`In addition,
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`in its opposition to the instant motion, Kyocera appears to contend that
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`Semcon’s appearances at two mediations before a Texas-based mediator concerning two
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`infringement lawsuits Semcon filed in the Eastern District of Texas make Semcon subject
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`to personal jurisdiction in this lawsuit because the mediations physically occurred in
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`3: 18—CV-1575-CAB-MDD
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`California. [Doc. No. 13 at 7-8.]1 Kyocera does not dispute, however, Semcon’s argument
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`in its motion that Semcon did not purposefully select California as the forum for these
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`mediations.
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`[Doc. No. 12 at 22-23.]
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`11.
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`Legal Standards
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`“Because the issue of personal jurisdiction in a declaratory action for patent
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`invalidity and non-infringement is intimately related to patent law, personal jurisdiction .
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`.
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`. is governed by the law of this circuit”). Silent Drive, Inc. v. Strong Indus, Inc., 326 F.3d
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`1194, 1201 (Fed. Cir. 2003). Under Federal Circuit law, “[p]ersonal jurisdiction over an
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`out-of—state defendant is appropriate if the relevant state’s long-arm statute permits the
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`assertion of jurisdiction without violating federal due process.” Nuance Comms., Inc. v.
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`Abbyy Software House, 626 F.3d 1222, 1230 (Fed. Cir. 2010) (quoting 3D Sys., Inc. v.
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`Aarotech Labs, Inc., 160 F.3d 1373, 1376-77 (Fed. Cir. 1998)). “Under Califomia’s long-
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`arrn statute, California state courts may exercise personal jurisdiction ‘on any basis not
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`inconsistent with the Constitution of this state or of the United States.”’ Daimler AG v.
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`Bauman, 571 US. 117, 125 (2014) (quoting Cal. Civ. Proc. Code Ann. § 410.10 (West
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`2004)). Thus, “the jurisdictional analyses under state law and federal due process are the
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`same.”’ Nuance Comms., 626 F.3d at 1230 (citing Schwarzenegger v. Fred Martin Motor
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`Co., 374 F.3d 797, 800-801 (9th Cir. 2004)).
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`Under the Due Process Clause of the Fourteenth Amendment, to exercise personal
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`jurisdiction over an out-of-state defendant, the defendant must have “certain minimum
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`contacts with [the State] such that the maintenance of the suit does not offend traditional
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`notions of fair play and substantial justice.” Goodyear Dunlop Tires Operations, S.A. v.
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`Brown, 564 US. 915, 923 (2011) (quoting Int’l Shoe Co. v. Washington, 326 US. 310, 316
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`(1945)
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`(internal quotation marks and citation omitted)).
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`This minimum contacts
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`jurisdiction may be either “general or all-purpose jurisdiction,” or “specific or case-linked
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`
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`1 Citation to page numbers of ECF documents is to the ECF watermark page number at the top of the page.
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`3
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`jurisdiction.” Id. at 919 (citing Helicopteros Nacionales de Colombia S.A. v. Hall, 466
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`US. 408, 414 (1984). Regardless, “it is essential in each case that there be some act by
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`which the defendant purposefully avails itself of the privilege of conducting activities
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`Within the forum State, thus invoking the benefits and protections of its laws.” Avocent
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`Huntsville Corp. v. Aten Int’l Co., Ltd, 552 F.3d 1324, 1329 (Fed. Cir. 2008) (quoting
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`Hanson v. Deckla, 357 US. 253 (1958)).
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`Here, because the parties have not conducted discovery and there was no evidentiary
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`hearing, Kyocera is only required to make a prirna facie showing that Semcon is subject to
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`personal jurisdiction. See AFTG-TG, LLC v. Nuvoton Tech. Corp., 689 F.3d 1358, 1360
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`(Fed. Cir. 2012). The uncontroverted allegations in the complaint must be taken as true
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`and factual conflicts must be resolved in Kyocera’s favor. Elecs. For Imaging, Inc. v.
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`Coyle, 340 F.3d 1344, 1349 (Fed. Cir. 2005). However, “bare formulaic accusations” that
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`a defendant maintains sufficient contacts with the forum state are inadequate. AFTG—TG,
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`689 F.3d at 1365; see also NuCal Foods, Inc. v. Quality Egg LLC, 887 F.Supp. 2d 977, 988
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`(ED. Cal. 2012) (“[T]he court need not consider merely conclusory claims, or legal
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`conclusions in the complaint as establishing jurisdiction”).
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`IH. Discussion
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`Although Kyocera makes a conclusory allegation of general jurisdiction in the
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`complaint, in its opposition, Kyocera contends only that Semcon is subject to specific
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`personal jurisdiction in California. Specific jurisdiction is focused on the “relationship
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`among the defendant, the forum, and the litigation.” Daimler AG, 571 US. at 133. “To
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`establish specific jurisdiction, a plaintiff must demonstrate that
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`‘the defendant has
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`purposefully directed his activities at residents of the forum, and the litigation results from
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`alleged injuries that arise out of or relate to those activities.” Avocent, 552 F.3d at 1330
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`(quoting Burger King Corp. v. Rudzewicz, 471 US. 462, 476-78 (1985) (internal quotation
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`marks and citations omitted)). Along these lines, the Federal Circuit has set forth a three
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`part test for determining whether specific personal jurisdiction satisfies due process in a
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`patent case: “(1) whether the defendant ‘purposefully directed’ its activities at residents of
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`3:18-CV-1575-CAB-MDD
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`the forum; (2) whether the claim ‘arises out of or relates to’ the defendant’s activities with
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`the forum; and (3) whether assertion of personal jurisdiction is ‘reasonable and fair.’”
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`Silent Drive, 326 F.3d at 1202 (citing Inamed Corp. v. Kuzmak, 249 F.3d 1356, 1360 (Fed.
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`Cir. 2001)). “The plaintiffhas the burden of proving parts one and two of the test, and then
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`the burden shifts to the defendant to prove that personal jurisdiction is unreasonable.”
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`Grober v. Mako Prods, Inc., 686 F.3d 1335, 1346 (Fed. Cir. 2012).
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`Kyocera fails miserably at proving the first two parts of the test. “[I]n the context of
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`an action for declaratory judgment of non-infringement, invalidity, and/or unenforceability
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`.
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`.
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`. [t]he relevant inquiry for specific personal jurisdiction purposes [is] what extent has
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`the defendant patentee ‘purposefully directed [such enforcement activities] at residents of
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`the forum,’ and the extent to which the declaratory judgment claim ‘arises out of or relates
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`to those activities.”’ Avocent, 552 F.3d at 1332-33 (quoting Breckenridge Pharm., Inc. v.
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`Metabolite Labs, Inc., 444 F.3d 1356, 1363 (Fed. Cir. 2006)). Although Kyocera need not
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`be the forum resident to whom Semcon’s enforcement activities are directed, to be subject
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`to personal jurisdiction, Semcon must “have engaged in ‘other activities’ that relate to the
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`enforcement or the defense of the validity of the relevant patents” in the forum beyond
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`merely notifying a party who happens to be located there of suspected infringement. Id. at
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`1333-34 (emphasis in original). “Examples of these ‘other activities’ include initiating
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`judicial or extra-judicial patent enforcement within the forum, or entering into an exclusive
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`license agreement or other undertaking which imposes enforcement obligations with a
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`party residing or regularly doing business in the forum.” Id. at 1334.
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`Kyocera offers no evidence that Semcon has engaged in any of these “other
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`activities” in or directed to California.
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`Instead, the California connection to Semcon’s
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`enforcement activities argued by Kyocera is unequivocally tangential and decidedly
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`inadequate to justify the exercise of personal jurisdiction in this case.
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`Semcon’s
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`enforcement efforts appear to be located exclusively in Texas. That two of the defendants
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`in the twelve patent infi‘ingement lawsuits Semcon filed in Texas happen to have principal
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`places of business in California is insufficient, without more,
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`to satisfy Kyocera’s
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`obligation to demonstrate that Semcon purposefully directed its enforcement activities at
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`California.2 Cf. Walden v. Fiore, 571 US. 277, 285 (2014) (stating that the “‘minimum
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`contacts’ analysis looks to the defendant’s contacts with the forum State itself, not the
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`defendant’s contacts with persons who reside there” and that “a defendant’s relationship
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`with a plaintiff or third party, standing alone, is an insufficient basis for jurisdiction”);
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`Adobe Sys. Inc. v. Tejas Research, LLC, No. C-14-0868 EMC, 2014 WL 4651654, at *5
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`(N.D. Cal. Sept. 17, 2014) (holding that “the fact that [the defendant] has pursued
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`enforcement actions against California residents in the Eastern District of Texas does not
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`support the exercise of personal jurisdiction of [the defendant] in California”); Autonomy,
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`Inc. v. Adiscov, LLC, No. C 11-00420 SBA, 2011 WL 2175551, at *4 (ND. Cal. June 3,
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`2011) (“[P]atent litigation commenced outside the forum is not probative of purposeful
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`availment.”); Juniper Networks, Inc. v. SSL Servs., LLC, No. C 08-5758 SBA, 2009 WL
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`3837266, at *4 (N.D. Cal. Nov. 16, 2009) (noting that the plaintiffs “argument that the act
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`of filing a lawsuit against an alleged California resident—in a Texas district court—is
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`sufficient to make a prima facie showing that it has purposefully availed ‘itself of the
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`privilege of conducting activities within the forum State, thus invoking the benefits and
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`protections of its laws’” did not “make any logical sense”) (emphasis in original) (quoting
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`Avocent, 552 F.3d at 1329).
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`Kyocera’s other arguments of minimum contacts with Califomia—that several
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`defendants in the Texas infringement actions have affiliates in California, that Semcon
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`attended mediations in California for two of the Texas infringement actions, and that
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`Semcon used an international process server with an office in Califomia—are even
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`2 Notably, in the complaints against the two entities with principal places ofbusiness in California, Semcon
`alleges that the companies’ principal places of business are in Texas.
`[Doc. No. 13-4 at 2; Doc. No. 13-8
`at 2-3.] Assuming Semcon’s allegations were made in good faith, one could argue that Semcon cannot
`have purposefully directed its enforcement activities at California if it in fact believed the allegedly
`infringing entities to have been residents of the forum in which the complaint was filed. Either way,
`Semcon’s lawsuits against these entities in a Texas forum do not support personal jurisdiction over
`Semcon here.
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`3: 18-CV—1575-CAB—MDD
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`flimsier. Kyocera offers no authority for the far-fetched proposition that Semcon directed
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`enforcement activities at California because it has filed lawsuits in Texas against other
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`alleged infringers who are not California residents themselves, but have affiliates in
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`California. Meanwhile, Semcon’s use of a process server with a California office to serve
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`a complaint
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`in a Texas lawsuit on a foreign company is no more relevant
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`to the
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`determination of personal jurisdiction than if Semcon used a computer manufactured by a
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`California company to draft the complaint itself. Finally, Semcon presents unrebutted
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`evidence that the mediations occurred in California solely as a result of the schedule of the
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`Texas-based mediator who had mediated several of Semcon’s other enforcement actions
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`concerning the Patents in Texas.
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`[Doc. Nos. 12-3 at 3; Doc. No. 12-4.] Such tenuous
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`connections to California do not tip the scales in Kyocera’s favor.
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`In sum, the California activities on which Kyocera relies do not support a finding
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`that Semcon has ever purposefully availed itself of the privilege of conducting activities
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`within California, thus invoking the benefits and protections of California laws. See
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`Avocent, 552 F.3d at 1329. All of the contacts with California identified by Kyocera are
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`merely ancillary to enforcement actions taken by Semcon in Texas. Thus, Kyocera has not
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`satisfied its burden of establishing personal jurisdiction over Semcon.
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`IV. Conclusion
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`For the foregoing reasons, Semcon is not subject
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`to personal jurisdiction in
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`California for the declaratory relief claims asserted in the complaint.3 Accordingly,
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`3 In a footnote, Kyocera half-heartedly requests jurisdictional discovery based on unspecified “information
`and belief” that Semcon may have license agreements with California-based entities. Ninth Circuit law
`applies to the issue ofjurisdictional discovery. Autogenomics, Inc. v. Oxford Gene Tech. Ltd, 566 F.3d
`1012, 1021 (Fed. Cir. 2009). Under Ninth Circuit law, “it is not necessarily an abuse of discretion to reject
`a request for jurisdictional discovery” when no formal motion is made, as is the case here.
`Id. at 1022.
`Regardless, Kyocera fails to justify the need for such discovery. “Discovery may be appropriately granted
`where pertinent facts bearing on the question ofjurisdiction are controverted or where a more satisfactory
`showing of the facts is necessary.” Boschetto v. Hansing, 539 F.3d 1011, 1020 (9th Cir. 2008) (quoting
`Data Disc, Inc. v. System Tech. Assoc., Inc., 557 F.2d 1280, 1285 n.1 (9th Cir. 1977)). However, “where
`a plaintiff’ s claim of personal jurisdiction appears to be both attenuated and based on bare allegations in
`the face of specific denials made by the defendants, the Court need not permit even limited discovery...”
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`7
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`3:18-CV-1575—CAB-MDD
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`Semcon’s motion to dismiss pursuant to Federal Rule of Civil Procedure 12(b)(2) is
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`GRANTED, and this case is DISMISSED without prejudice to refiling in a jurisdiction
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`Where Semcon is subject to personal jurisdiction.4
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`It is SO ORDERED.
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`Dated: October 19, 2018
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`32;
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`Hon. Cathy Ann Bencivengo
`United States District Judge
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`Pebble Beach Co. v. Cadajz, 453 F.3d 1151, 1160 (9th Cir. 2006) (quoting Terracom v. Valley Nat. Bank,
`49 F.3d 555, 562 (9th Cir. 1995)). In light of the attenuated facts and allegations on which Kyocera relies
`for its arguments of personal jurisdiction, the Court is not persuaded that jurisdictional discovery is
`warranted based on Kyocera’s unsupported speculation as to what such discovery could reveal.
`4 In light ofthis holding, Semcon’s motion to dismiss based on the first to file rule is DENIED AS MOOT.
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`8
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`3: 18-CV-1 5 75 -CAB -MDD
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