Case 3:17-cv-00183-CAB-BGS Document 106 Filed 03/21/17 PageID.2362 Page 1 of 4
`
`
`
`
`
`
`
`UNITED STATES DISTRICT COURT
`
`SOUTHERN DISTRICT OF CALIFORNIA
`
`
`
` Case No.: 3:17-cv-0183-CAB-(BGS)
`
`ORDER ON ESET SPOL’S MOTION
`TO DISMISS
`[Doc. No. 55]
`
`FINJAN, INC.,
`
`v.
`
`Plaintiff,
`
`ESET, LLC, a California Limited Liability
`and ESET SPOL. S.R.O., a Slovak
`Republic Corporation,
`
`Defendants.
`
`
`
`Before 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.
`
`ESET 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
`
`1
`
`3:17-cv-0183-CAB-(BGS)
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`

`

`Case 3:17-cv-00183-CAB-BGS Document 106 Filed 03/21/17 PageID.2363 Page 2 of 4
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`ESET LLC both do sufficient business in the Northern District of California1 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.
`
`Personal 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.
`
` Rule 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
`
`20
`
`1295.
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
` Due 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
`
`
`
`1 This matter was transferred to this judicial district at the request of defendant ESET LLC while the
`motion to dismiss was pending. The analysis of personal jurisdiction for ESET spol, however is not
`dependent on its contacts with a specific judicial district but on the evidence of sufficient minimum
`contacts with the United States.
`
`2
`
`3:17-cv-0183-CAB-(BGS)
`
`

`

`Case 3:17-cv-00183-CAB-BGS Document 106 Filed 03/21/17 PageID.2364 Page 3 of 4
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`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.
`
` Finjan 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.
`
` The 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, 851 01 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
`
`23
`
`as the licensor.
`
`24
`
`25
`
`26
`
`27
`
`28
`
` Resolving 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.
`
`3
`
`3:17-cv-0183-CAB-(BGS)
`
`

`

`Case 3:17-cv-00183-CAB-BGS Document 106 Filed 03/21/17 PageID.2365 Page 4 of 4
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
` With 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. 2 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 therefore denied.
`
` ESET spol is ordered to file an answer no later than April 3, 2017 in accordance
`
`with the Court’s order issued at Doc. No. 105.
`
`13
`
`
`
`It is SO ORDERED.
`
`14
`
`Dated: March 21, 2017
`
`
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`
`
`2 As noted in the order on ESET LLC’s motion to dismiss, significant work has been done by Finjan to
`narrow and more particularly identify the claims of infringement pursuant to the scheduling order entered
`before the case was transferred. Consequently, the Court finds the need to amend the complaint to provide
`adequate notice to the defendants has become generally moot.
`
`4
`
`3:17-cv-0183-CAB-(BGS)
`
`