Case 1:20-cv-00371-LPS Document 117 Filed 10/29/21 Page 1 of 30 PageID #: 4114
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE DISTRICT OF DELAWARE
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`FINJANLLC,
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`Plaintiff,
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`V.
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`TRUSTWA VE HOLDINGS, INC. and
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`SINGAPORE TELECOMMUNICATIONS
`LIMITED,
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`Defendants.
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`C.A. No. 20-371-LPS
`UNSEALED ON
`NOV. 1, 2021
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`Karen E. Keller and Jeff Castellano, SHAW KELLER LLP, Wilmington, Delaware
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`Bijal Vakil and Jeremy T. Elman, WHITE & CASE LLP, Palo Alto, California
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`Attorneys for Plaintiff
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`Jack B. Blumenfeld and Alexandra M. Cumings, MORRIS, NICHOLS, ARSHT & TUNNELL
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`LLP, Wilmington, Delaware
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`John S. Letchinger, BAKER & HOSTETLER LLP, Chicago, Illinois
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`Jared A. Brandyberry, BAKER & HOSTETLER LLP, Denver, Colorado
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`Attorneys for Defendants
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`MEMORANDUM OPINION
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`October 29, 2021
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`Wilmington, Delaware
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`

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`Case 1:20-cv-00371-LPS Document 117 Filed 10/29/21 Page 2 of 30 PageID #: 4115
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`~~~
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`STARK, U.S. Distri Judge:
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`On March 16, 2020, Plaintiff Finjan LLC ("Finjan" or "Plaintiff') filed suit against
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`Trustwave Holdings, Inc. ("Trustwave") and Trustwave' s parent entity, Singapore
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`Telecommunications Limited ("Singtel") (collectively, "Defendants"), for infringement of U.S.
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`Patent No. 8,141,154 (the'" 154 patent") based on Trustwave's sales of certain cybersecurity
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`products. (See D .I. 1) 1 The ' 154 patent generally relates to the protection of computers from
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`malicious code such as computer viruses. (See D.I. 48 at 1; D.I. 28 Ex. A)
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`On August 5, 2020, Singtel filed a motion to dismiss for lack of personal jurisdiction
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`pursuant to Federal Rule of Civil Procedure 12(b)(2). (D.I. 21) Finjan filed a First Amended
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`Complaint ("FAC") on August 19, 2020, in which it added a claim against Singtel for breach of
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`contract. (D .I. 28 11 101-15) Singtel subsequently renewed its motion to dismiss (D .I. 31 ),
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`directing it to Finjan' s F AC, and the Court denied without prejudice the earlier motion directed
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`to the original complaint (see D.I. 63). On April 30, 2021 , Singtel filed a motion to stay Finjan' s
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`breach of contract claim against it pending resolution of Finjan's breach of contract claim which
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`is presently proceeding against Trustwave in Delaware Superior Court. (D.I. 64)
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`The Court heard argument on Singtel's motion to dismiss the FAC (D.I. 31) on May 7,
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`2021 (see D.I. 101) ("May 7 Tr."). At the conclusion of the hearing, the Court granted Finjan's
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`request for jurisdictional discovery (see id at 45-4 7) and took the motion to dismiss under
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`advisement (see D.I. 68). After the parties engaged in jurisdictional discovery, they submitted
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`supplemental briefing on the motion to dismiss on August 17 and -September 1. (See D.I. 95,
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`100) On September 13, the Court heard argument again, on the motion to dismiss and on
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`1 All references to the docket index ("D.I.") are to the docket in the instant action, C.A. No. 20-
`371-LPS, unless otherwise indicated.
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`1
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`

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`Case 1:20-cv-00371-LPS Document 117 Filed 10/29/21 Page 3 of 30 PageID #: 4116
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`Singtel's motion to stay (see D.I. 106 ("Sept. 13 Tr."); see also D.I. 105 (post-hearing status
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`report)).
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`For the reasons set forth below, the Court will deny in part and grant in part Singtel's
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`motion to dismiss and will grant Singtel's motion to stay.
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`I.
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`BACKGROUND
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`Since its founding in 1997, Finjan has developed technologies directed at detecting
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`cybersecurity threats, for which it has been granted numerous patents. (D.I. 28 1 19) In 2009,
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`Finjan sold its manufacturing business to M86 Security, Inc. ("M86"), also licensing a subset of
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`its patents to M86. (D.I. 48 at 3) The ' 154 patent was not among the patents licensed to M86, as
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`the '154 patent application did not publish until September 30, 2010 and the patent did not issue
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`until March 20, 2012. (Id. at 3-4; D.I.28173) In March 2012, M86 was acquired by
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`Trustwave. (D.I. 48 at 4) Leading up to the Trustwave-M86 transaction, the parties re(cid:173)
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`negotiated certain aspects of the 2009 agreement between Finjan and M86. (Id.) Thereafter, on
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`March 6, 2012, Trustwave and Finjan entered into the 2012 Amended and Restated Patent
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`License Agreement (the "2012 Agreement"). (Id.)
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`The parties point to several provisions of the 2012 Agreement that are relevant to the
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`Court' s analysis of Singtel' s motion to dismiss.
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`Section 1.1 defines an "Acquir[o]r" as " (t]he Person or group of Persons acquiring the
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`Licensee or its business." (D.I. 28 Ex. B § 1.1) There is no dispute that Singtel, as the party
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`which acquired Trustwave, is the "Acquiror" under this definition in the 2012 Agreement.
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`Section 2.5 provides that "[i]n the event of an Acquisition of Licensee, all the provisions
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`of this Agreement applicable to Licensee ... shall be deemed to apply to the Acquir[ o ]r." (Id.
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`§ 2.5) Finjan contends that because Trustwave was the Licensee, and Singtel is the Acquiror,
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`2
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`

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`Case 1:20-cv-00371-LPS Document 117 Filed 10/29/21 Page 4 of 30 PageID #: 4117
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`"all the provisions of [the 2012] Agreement applicable to [Trustwave] ... shall be deemed to
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`apply to [Singtel]." (D.I. 49 at 10)
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`Singtel disagrees with this interpretation of Section 2.5, highlighting two provisions that,
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`it contends, provide context for Section 2.5. (See Sept. 13 Tr. at 12, 15-16) Section 2.1 grants a
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`license to "the Licensee" over the "Licensed Patents" but does not specifically mention
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`Acquirors. (D.I. 28 Ex. B § 2.1) Section 2.4 provides that the Licensee may transfer the licenses
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`granted under the 2012 Agreement, provided that "[e]ach Permitted Transferee shall, as a
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`condition to the effectiveness of such Transfer, assume in writing all of the rights and obligations
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`of such Licensee hereunder through the execution of an assignment and assumption agreement."
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`(Id. § 2.4)
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`The 2012 Agreement also contains a forum selection clause, Section 6.4.1, which
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`provides:
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`The parties hereto hereby irrevocably submit to the exclusive
`jurisdiction of any federal or state court located within the State of
`Delaware over any dispute arising out of or relating to this
`Agreement and each party hereby irrevocably agrees that all claims
`in respect of such dispute or any suit, action proceeding related
`thereto may be heard and determined in such courts.
`
`(Id. § 6.4.1)
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`Finally, Section 6.9 provides:
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`This Agreement shall be binding upon the parties and their
`successors and assigns and inure to the benefit of the parties and
`their respective successors and permitted assigns. Nothing in this
`Agreement shall create or be deemed to create any third party
`beneficiary rights in any person or entity not a party to this
`Agreement.
`
`(Id. § 6.9)
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`3
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`

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`Case 1:20-cv-00371-LPS Document 117 Filed 10/29/21 Page 5 of 30 PageID #: 4118
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`On August 31, 2015, Trustwave was acquired by Singtel, a telecommunications company
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`based in Singapore. (D.I. 28 ,r,r 5, 9) Singtel alleges that it has no offices or employees in the
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`United States, has not sold the accused products in the United States, and plays no role in the
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`design, manufacture, marketing, pricing, or sale of the accused products sold by Trustwave in the
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`United States. (See D.I. 32 at 1)
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`During jurisdictional discovery, Singtel produced the 2015 Merger Agreement between
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`Singtel and Trustwave (the "2015 Agreement"), along with related disclosures. (See D.I. 95 at 3)
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`Section 1.2 of the 2015 Agreement provides that, upon the merger becoming effective,
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`Trustwave ("the Company") will become a subsidiary of Singtel ("the Acquiror"). (D.I. 95 Ex. 2
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`§ 1.2)
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`Singtel also produced a Company Disclosure Letter associated with the 2015 Agreement.
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`(See D.I. 95 Ex. 3) Schedule 2.18 ofTrustwave' s Company Disclosure Letter identifies the 2012
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`Finjan-Trustwave Agreement as a "Material Contract." (Id. at 474) Section 2.18 of the 2015
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`Agreement ( entitled "Material Contracts") references the contracts in Schedule 2.18, stating that
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`"[e]xcept for this [2015] Agreement and the Contracts specifically identified in ... Schedule
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`2.18 of the Company Disclosure Letter .. . , neither the Company nor any Subsidiary is a party to
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`or bound by any of the following [ enumerated types ofJ Contracts." (Id. Ex. 2 § 2.18)
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`Finally, Section 5.6(c) of the 2015 Agreement provides that:
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`[Trustwave] shall use its reasonable best efforts to obtain, prior to
`the Closing, the entry by [Trustwave] and [Finjan]
`into a
`supplemental agreement relating to the [2012 Agreement] ... to
`confirm that neither the Merger, nor subsequent assignment of the
`[2012 Agreement] to [Singtel] or any [ o ]fits Subsidiaries, will result
`in a diminution of rights under the [2012 Agreement], or royalty
`obligations for [Trustwave, Singtel] or any of its Subsidiaries.
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`4
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`

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`Case 1:20-cv-00371-LPS Document 117 Filed 10/29/21 Page 6 of 30 PageID #: 4119
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`(Id § 5.6(c))2
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`On April 4, 2018, Finjan sued Trustwave in the Delaware Superior Court for breach of
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`the 2012 Agreement. (See C.A. No. 20-372 D.I. 2 Ex. A) Finjan alleged that Trustwave' s
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`acquisition by Singtel triggered a 4% royalty on certain products, and that Trustwave failed to
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`pay Finjan those royalties and related costs. (Id. at 11) Judge Carpenter of the Delaware
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`Superior Court denied Trustwave's motion to dismiss the claim, explaining: "Finjan' s suit for
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`breach of contract may proceed, but only to determine whether or not Singtel is actually using
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`the patent technology that would trigger royalty payments under the Agreement." (Id at 202-04)
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`Judge Carpenter subsequently ordered an audit of Singtel's resales ofTrustwave's products.
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`(D.I. 70 Ex.Bat 45) He also concluded that while Trustwave does not owe royalties to Finjan
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`under the 2012 Agreement, Singtel may owe Finjan additional royalties. (See id. at 42-45)
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`2 The Court has inserted the bracketed entities for ease of reference and to indicate the Court' s
`understanding of the application of Section 5. 6 to the circumstances presented by the pending
`motion. For reference, the unaltered text of Section 5.6(c) reads:
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`The Company shall use its reasonable best efforts to obtain, prior to
`the Closing, the entry by the Company and F I Delaware, Inc. into a
`supplemental agreement relating to the Amended and Restated
`Patent License Agreement between such parties to confirm that
`neither the Merger, nor subsequent assignment of the Amended and
`Restated Patent License Agreement to Acquiror or any if [sic] its
`Subsidiaries, will result in a diminution of rights under the Amended
`and Restated Patent License Agreement, or royalty obligations for
`the Company, Acquiror or any of its Subsidiaries.
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`The Court understands FI Delaware, Inc. to mean Finjan. Section 5.6(c) refers to the name of
`the specific Finjan entity listed in the 2012 Agreement, which was between Trustwave and "FI
`Delaware, Inc., formerly known as Finjan, Inc." (See D.I. 28 Ex. B) The parties have not
`distinguished between FI Delaware, Inc. and the Finjan entity that is a party to this case and
`have proceeded under the assumption that Section 5.6(c) refers to Finjan. (See D.I. 95 at 9; Sept.
`13 Tr. at 28-30)
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`5
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`

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`Case 1:20-cv-00371-LPS Document 117 Filed 10/29/21 Page 7 of 30 PageID #: 4120
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`After nearly two years of litigation before Judge Carpenter, Finjan removed the state
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`court case to this Court on March 16, 2020. (See C.A. No. 20-372 D.I. 2) Shortly thereafter,
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`Trustwave filed a motion to remand. (C.A. No. 20-372 D.I. 9) The Court granted Trustwave' s
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`motion, finding that Finjan' s removal was untimely. (C.A. No. 20-372 D.I. 40 at 5) ("The length
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`of the delay here is extreme, as Finjan waited approximately 18 months after Trustwave' s motion
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`to dismiss raised patent issues before Finjan removed the state court action to this court.")
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`On the same date that Finjan removed the breach of contract action against Trustwave
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`from Superior Court to this Court, Finjan also filed the instant action, asserting that both
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`Trustwave and Singtel infringe Finjan' s ' 154 patent. (D.I. 1) On August 19, 2020, Finjan filed
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`the F AC, which added a claim for breach of contract against Trustwave. (D.I. 28)
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`II.
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`LEGAL ST AND ARDS
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`A. Motion to Dismiss
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`Pursuant to Federal Rule of Civil Procedure 12(6)(2), a party may move to dismiss a case
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`based on the Court' s lack of personal jurisdiction over that party. Determining the existence of
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`personal jurisdiction requires a two-part analysis - one statutory and one constitutional. First,
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`the Court analyzes the long-arm statute of the state in which the Court is located.3 See IMO
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`Indus., Inc. v. Kiekert AG, 155 F.3d 254,259 (3d Cir. 1998). Delaware' s long-arm statute, 10
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`Del. C. § 3104, has been construed "liberally so as to provide jurisdiction to the maximum extent
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`possible. In fact, the only limit placed on § 3104 is that it remain within the constraints of the
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`Due Process Clause." Boone v. Oy Partek Ab, 724 A.2d 1150, 1157 (Del. Super. Ct. 1997)
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`3 With regard to the statutory inquiry, the Court applies the law of the state in which it is located;
`as to the constitutional inquiry, in a patent case the Court applies the law of the Federal Circuit.
`See Autogenomics, Inc. v. Oxford Gene Tech. Ltd., 566 F.3d 1012, 1016 (Fed. Cir. 2009).
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`6
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`

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`Case 1:20-cv-00371-LPS Document 117 Filed 10/29/21 Page 8 of 30 PageID #: 4121
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`(internal citations omitted), aff'd, 707 A.2d 765 (Del. 1998); see also Hercules Inc. v. Leu Tr. &
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`Banking (Bahamas) Ltd. , 611 A.2d 476, 480 (Del. 1992).
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`Next, the Court must determine whether exercising jurisdiction over the defendant
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`comports with the Due Process Clause of the Constitution. See IMO Indus. , 155 F.3d at 259.
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`Due process is satisfied if the Court finds the existence of "minimum contacts" between the non(cid:173)
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`resident defendant and the forum state, "such that the maintenance of the suit does not offend
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`traditional notions of fair play and substantial justice." Int '! Shoe Co. v. Washington, 326 U.S.
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`310, 316 (1945) (internal quotation marks omitted).
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`When a defendant moves to dismiss a lawsuit for lack of personal jurisdiction, the
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`plaintiff bears the burden of showing the basis for jurisdiction. See Power Integrations, Inc. v.
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`BCD Semiconductor, 547 F. Supp. 2d 365, 369 (D. Del. 2008). If no evidentiary hearing has
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`been held, a plaintiff "need only establish a prima facie case of personal jurisdiction and the
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`plaintiff is entitled to have its allegations taken as true and all factual disputes drawn in its
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`favor. " Miller Yacht Sales, Inc. v. Smith, 384 F.3 d 93, 97 (3d Cir. 2004); see also Depreny l
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`Animal Health, Inc. v. Univ. ofToronto Innovations Found. , 297 F.3d 1343, 1347 (Fed. Cir.
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`2002) (holding that, in absence of evidentiary hearing regarding jurisdiction, "all factual disputes
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`must be resolved in [plaintiffs] favor in order to evaluate its prima facie showing of
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`jurisdiction"). A plaintiff "presents a prima facie case for the exercise of personal jurisdiction by
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`establishing with reasonable particularity sufficient contacts between the defendant and the
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`forum state." Mellon Bank (E.) PSFS, Nat '! Ass 'n v. Farino , 960 F.2d 1217, 1223 (3d Cir. 1992)
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`(internal quotation marks omitted).
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`"To survive a motion to dismiss in the absence of jurisdictional discovery, plaintiffs need
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`only make a prima facie showing of jurisdiction." Nuance Commc 'ns, Inc. v. Abbyy Software
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`7
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`

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`Case 1:20-cv-00371-LPS Document 117 Filed 10/29/21 Page 9 of 30 PageID #: 4122
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`House, 626 F.3d 1222, 1231 (Fed. Cir. 2010). Where, as here, the parties have conducted
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`discovery but the Court has not held an evidentiary hearing, there is little guidance as to the
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`precise standard applicable to plaintiff's burden to establish personal jurisdiction over the
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`defendant. About all that the parties (and the Court) have found as precedent are suggestions
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`that a plaintiff, once provided discovery, appears to confront some unspecified greater burden
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`than merely making out a prima facie case. See id.; see also Autogenomics, 566 F .3d at 1017
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`("[B]ecause the parties have not conducted discovery, [the plaintiff] needed only to make a
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`prima facie showing that [the defendant] was subject to personal jurisdiction.") (emphasis
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`added).
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`B.
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`Colorado River Abstention
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`"The general rule regarding simultaneous litigation of similar issues in both state and
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`federal courts is that both actions may proceed until one has come to judgment, at which point
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`that judgment may create a res judicata or collateral estoppel effect on the other action." Univ. of
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`Md. at Baltimore v. Peat Marwick Main & Co., 923 F.2d 265, 275-76 (3d Cir. 1991).
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`"Nevertheless, in Colorado River, the Supreme Court recognized that there are certain extremely
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`limited circumstances in which a federal court may defer to pending state court proceedings
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`based on considerations of 'wise judicial administration, giving regard to conservation of judicial
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`resources and comprehensive disposition of litigation. '" Ryan v. Johnson, 115 F .3d 193, 195 (3d
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`Cir. 1997) (quoting Colorado River Water Conservation Dist. v. United States, 424 U.S. 800,
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`817 (1976)).
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`"In order for Colorado River abstention to be appropriate, there must be parallel state and
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`federal litigations that are truly duplicative." Rycoline Prods. , Inc. v. C & W Unlimited, 109 F.3d
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`883, 890 (3d Cir. 1997) (internal quotation marks omitted). Thus, a "threshold issue that must be
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`8
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`

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`Case 1:20-cv-00371-LPS Document 117 Filed 10/29/21 Page 10 of 30 PageID #: 4123
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`decided in any Colorado River abstention case is whether the [ state and federal] actions are
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`'parallel."' Ryan, 115 F .3d at 196. "Two proceedings generally are considered parallel when
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`they involve the same parties and substantially identical claims, raising nearly identical
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`allegations and issues." Golden Gate Nat '! Senior Care, LLC v. Minich, 629 F. App 'x 348, 350
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`(3d Cir. 2015) (internal quotation marks omitted); see also Yang v. Tsui, 416 F.3d 199,204 n.5
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`(3d Cir. 2005). In order for state and federal proceedings to be "parallel," plaintiffs in both fora
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`should generally be "seek[ing] the same remedies." Golden Gate, 629 F. App'x at 350 (citing
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`Harris v. Pernsley, 755 F.2d 338,346 (3d Cir. 1985)).
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`"If a court finds the proceedings to be parallel, it then carefully balances a host of factors
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`to determine if abstention is warranted, bearing in mind that it should place a thumb on the scales
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`in favor of granting jurisdiction." Id ( citing Moses H Cone Mem '! Hosp. v. Mercury Constr.
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`Corp. , 460 U.S. 1, 16 (1983)). The Third Circuit has identified six factors for courts to consider
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`when determining whether - when parallel cases are proceeding in state and federal court -
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`abstention is warranted under Colorado River:
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`( 1) [in an in rem case,] which court first assumed jurisdiction over
`[the] property; (2) the inconvenience of the federal forum; (3) the
`desirability of avoiding piecemeal litigation; ( 4) the order in which
`jurisdiction was obtained; (5) whether federal or state law controls;
`and ( 6) whether the state court will adequately protect the interests
`of the parties.
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`Nationwide Mut. Fire Ins. Co. v. George V Hamilton, Inc., 571 F.3d 299, 308 (3d Cir. 2009)
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`(internal quotation marks omitted). "[T]he decision whether to dismiss a federal action because
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`of parallel state-court litigation does not rest on a mechanical checklist, but on a careful
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`balancing of the important factors as they apply in a given case, with the balance heavily
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`weighted in favor of the exercise of jurisdiction." Moses H Cone, 460 U.S. at 16. "'No one
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`factor is determinative; a carefully considered judgment taking into account both the obligation
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`9
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`

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`Case 1:20-cv-00371-LPS Document 117 Filed 10/29/21 Page 11 of 30 PageID #: 4124
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`to exercise jurisdiction and the combination of factors counseling against that exercise is
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`required. "' Hamilton , 571 F.3d at 308 (quoting Colorado River, 424 U.S. at 818-19).
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`III.
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`DISCUSSION
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`A.
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`Singtel's Motion to Dismiss
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`As a preliminary matter, the parties dispute which standard Finjan must meet to survive
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`Singtel' s motion to dismiss now that the parties have engaged in jurisdictional discovery.
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`Singtel contends that the parties have "completed jurisdictional discovery" and, accordingly,
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`Finjan' s "burden is much higher than a common prirna facie burden at this point." (Sept. 13 Tr.
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`at 5-7) In Finjan' s view, however, because it has not yet received all the jurisdictional discovery
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`it has requested, and the Court did not hold an evidentiary hearing, only a prima facie showing is
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`required at this stage. (See id. at 21-22)
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`The Federal Circuit has explained that " [t]o survive a motion to dismiss in the absence of
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`jurisdictional discovery, plaintiffs need only make a prirna facie showing of jurisdiction."
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`Nuance, 626 F.3d at 1231 (emphasis added). "Without discovery and a record on jurisdiction,
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`[courts] must resolve all factual disputes in the plaintiffs favor. " Id. (internal citation omitted).
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`In this case, however, Finjan has received jurisdictional discovery. In fact, it has received a
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`substantial amount of jurisdictional discovery, including production of documents, a deposition,
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`and answers to interrogatories. More importantly, Finjan has received the jurisdictional
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`discovery that the Court determined was sufficient for purposes of litigating the motion to
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`dismiss. (See D.I. 94; see also D.I. 78 Goint status report containing requests for additional
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`discovery)) Although the parties have not identified authority explaining exactly what burden
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`Finjan faces at this point, the Court is persuaded that Plaintiff must now do more than merely
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`make a prima facie showing of jurisdiction. (See Sept. 13 Tr. at 6-7) Consequently, the Court is
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`10
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`

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`Case 1:20-cv-00371-LPS Document 117 Filed 10/29/21 Page 12 of 30 PageID #: 4125
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`not bound to presume that all factual disputes with respect to jurisdiction are resolved in Finjan' s
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`favor. See Miller Yacht Sales, 384 F.3d at 97. 4
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`Singtel argues it has insufficient contacts with Delaware for the Court to exercise
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`personal jurisdiction over it based on its own conduct or its subsidiaries' conduct in Delaware.
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`(See D.I. 32 at 3-5) In opposition, Finjan presents four arguments. First, Finjan argues Singtel
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`expressly consented to this Court' s jurisdiction when it acquired Trustwave, since the contract
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`between Trustwave and Finjan contains a forum selection clause designating Delaware as the
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`forum of choice. (See D.I. 49 at 8-10) Second, Finjan contends that Singtel' s marketing and
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`offering for sale of the accused products in Delaware and the United States gives rise to personal
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`jurisdiction. (See id. at 10-12) Third, Finjan asserts that there is both general and specific
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`personal jurisdiction over Singtel based on Singtel' s relationship with Trustwave and Singtel' s
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`other wholly owned subsidiaries. (See id. at 12-16) Fourth, Finjan argues, in the alternative, that
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`if Singtel is not subject to jurisdiction in any district in the United States, then it has sufficient
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`contacts with the United States as a whole to support exercising jurisdiction pursuant to Federal
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`Rule of Civil Procedure 4(k)(2). (See id. at 18-19) The Court addresses each of these issues
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`below.
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`4 Nevertheless - and as further explained below - the Court has concluded that the specific
`articulation of the burden on Plaintiff does not alter the outcome on any issue. In other words,
`whether the Court were to impose on Plaintiff nothing more than an obligation to make out a
`prima facie case, or alternatively were the Court to require Plaintiff to prove its contentions by a
`preponderance of the evidence, all of the Court' s findings would remain the same. In particular,
`the finding that Singtel is bound (with respect to the breach of contract claim) by the forum
`selection clause has been proven by a preponderance of the evidence; by contrast, Plaintiff has
`failed to make out even a prima facie case of any other basis for this Court to exercise personal
`jurisdiction over Singtel ( or any basis to do so with respect to the patent infringement claim).
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`11
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`

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`Case 1:20-cv-00371-LPS Document 117 Filed 10/29/21 Page 13 of 30 PageID #: 4126
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`1.
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`Forum Selection Clause
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`a.
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`Breach of contract claim
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`Unlike subject matter jurisdiction, personal jurisdiction can be waived by a party' s
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`express or implied consent to jurisdiction. See Res. Ventures, Inc. v. Res. Mgmt. Int '!, Inc., 42 F.
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`Supp. 2d 423 , 431 (D. Del. 1999) ( citing Ins. Corp. of Ireland v. Compagnie des Bauxites de
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`Guinee, 456 U.S. 694, 702-03 (1982)). Execution of an agreement containing a forum selection
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`clause, for example, can constitute express consent to the jurisdiction of the forum state. See id.
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`Once a party has expressly consented to jurisdiction, the traditional jurisdictional analysis under
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`Delaware's long-arm statute and the Due Process Clause is not required. See Capriotti 's
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`Sandwich Shop, Inc. v. Taylor Fam. Holdings, Inc., 857 F. Supp. 2d 489, 500 (D. Del. 2012);
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`Eastman Chem. Co. v. AlphaPet Inc., 2011 WL 6004079, at *4 (D. Del. Nov. 4, 2011).
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`Finjan claims that, by acquiring Trustwave, Singtel consented to this Court's jurisdiction,
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`an argument premised on the forum selection clause in the 2012 Agreement between Finjan and
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`Trustwave. (See D.I. 49 at 8; D.I. 28 Ex. B § 6.4.1 ) Specifically, Finjan relies on Section 2.5 of
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`the 2012 Agreement, which provides that, in the event of an acquisition of Trustwave, "all the
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`provisions of this Agreement applicable to Licensee [i.e., Trustwave] ... shall be deemed to
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`apply to the Acquir[o]r," which here is Singtel. (D.I. 28 Ex. B § 2.5)
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`Singtel responds that Section 2.5 conflicts with other provisions in the 2012 Agreement
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`and those latter provisions suggest the forum selection clause does not bind acquirors. (See Sept.
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`13 Tr. at 16) Section 2.1, for example, grants a license to the Licensee, without mentioning
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`acquirors of the Licensee. (See id.) Section 2.4 provides that a license transfer is only valid if
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`the transferee expressly assumes in writing the obligations of the Licensee; Section 2.5 lacks
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`such a requirement. (See May 7 Tr. at 19) Section 6.9 provides that "[the] Agreement shall be
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`binding upon the parties and their successors and assigns" and that "[n]othing in this Agreement
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`shall create or be deemed to create any third party beneficiary rights in any person or entity not a
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`party to this Agreement." (D.I. 28 Ex. B § 6.9) Singtel notes that Section 6.9 does not reference
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`"Acquirors." (See Sept. 13 Tr. at 10-11)
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`Singtel argues there is a meaningful difference between Section 2.5's language - that all
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`provisions of the Agreement applicable to Trustwave "shall be deemed to apply" to Singtel -
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`and Section 6.9' s language -that the Agreement "shall be binding upon the parties and their
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`successors and assigns" ( emphasis added). (Id. at 10) As further support for its view that "shall
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`be deemed" in Section 2.5 cannot mean what Finjan contends, Singtel points to the remainder of
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`Section 6.9, which includes the phrase "[n]othing in this Agreement shall create or be deemed to
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`create any third party beneficiary rights in any person or entity not a party to this Agreement"
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`(emphasis added). (Id.) To Singtel, this phrasing indicates that the drafters of the 2012
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`Agreement distinguished between "creating" a right and "deeming" something to be creating a
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`right. (See id.) To Singtel, the "shall be deemed" language in Section 2.5 imposes an obligation
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`on Trustwave only, providing that in the event of an acquisition and relevant conduct by an
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`Acquiror, "Trustwave must account for royalties attributable to" that conduct, but the Acquiror
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`need not do so. (Id. at 12-13) Singtel adds that any ambiguity in the 2012 Agreement should be
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`read against Finjan, which was one of the parties drafting the agreement (while Singtel was not).
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`Finjan responds that Singtel makes too much of the linguistic differences between
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`Sections 2.5 and 6.9, characterizing Singtel' s position as "an artificially created distinction." (Id.
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`at 27) The Court agrees with Finjan. Singtel has not persuaded the Court there is a material
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`difference between "shall" and "shall be deemed to" as used in the pertinent provisions of the
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`2012 Agreement. Further, while Singtel is not unreasonable to point to Sections 2.1 , 2.4, and
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`6.9, the far more important place to look to determine whether the parties to the 2012 Agreement
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`intended to impose obligations on an Acquiror of Trustwave is, as Finjan argues, Section 2.5 -
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`which is, after all, the provision defining the rights and obligations of the Acquiror. (See D.I. 28
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`Ex. B § 2.5) ("Acquiring Parties")5
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`Singtel argues that the forum selection clause of Section 6.4.1 does not apply to it
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`because the express language of the provision binds the "parties hereto" to litigate disputes in
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`Delaware. (See D.I. 32 at 19) Singtel is a non-signatory to the 2012 Agreement and, hence, not
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`a "party" to it.
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`Under Delaware law, courts use a three-part test to determine whether to apply a forum
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`selection clause to a non-signatory: (1 ) the forum selection clause must be valid, (2) the non(cid:173)
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`signatory must be a third-party beneficiary or closely related to the contract, and (3) the claim
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`must arise from the agreement. See Baker v. Impact Holding, Inc., 2010 WL 1931032, at *3
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`(Del. Ch. May 13, 2010); see also Eastman, 2011 WL 6004079, at *4. Singtel does not dispute
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`the first and third requirements of the inquiry, and the Court finds that both are met. As to the
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`second prong, Finjan proceeds only on a theory that Singtel is "closely related" to the 2012
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`Agreement. (See D.I. 49 at 9-10; see also May 7 Tr. at 27 ("We . .. claim that [Singtel is]
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`closely related to the contract. [Singtel is] not a third-party beneficiary."))
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`An entity can be closely related to an agreement if ( 1) it receives a direct benefit from the
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`agreement or (2) it was foreseeable that it would be bound by the agreement. See Baker, 2010
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`5 Singtel' s position is further undermined by record evidence of communications from
`Trustwave' s counsel, Annabel Lewis, about a month before the 2015 Singtel-Trustwave merger.
`(See D.I. 28 Ex. L) Ms. Lewis wrote at the time that "the parties [i.e., Singtel and Trustwave]
`agree that ... Section 2.5, and not Section 2.4, is the relevant provision that applies to the
`proposed acquisition." (Id.) Accordingly, Ms. Lewis continued, there was "no requirement for
`Finjan' s consent in relation to" the Singtel-Trustwave merger. (Id.)
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`WL 1931032, at *4. Despite the characterization by some courts of the two inquiries as
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`disjunctive, see McWane, Inc. v. Lanier, 2015 WL 399582, at *8 (Del. Ch. Jan. 30, 2015), the
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`Third Circuit has explained that foreseeability is a "prerequisite to ... binding a non-signatory as
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`a closely related party," In re McGraw-Hill Glob. Educ. Holdings LLC, 909 F.3d 48, 64 (3d Cir.
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`2018). Further, as Singtel notes, Delaware courts have cautioned against relying on
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`foreseeability alone to satisfy the closely related test except in limited scenarios, which do not
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`apply here. See Neurvana Med., LLC v. Bait USA, LLC, 2019 WL 4464268, at *5 (Del. Ch.
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`Sept. 18, 2019). The circumstances presented here do not call upon the Court to determine
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`whether it would suffice to show either foreseeability or a direct benefit to satisfy the closely
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`related test because the Court finds that both elements are satisfied here.
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`First, as to foreseeability, Finjan correctly notes that jurisdictional discovery confirmed
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`Singtel' s knowledge of the 2012 Agreement at the time Singtel proceeded with its merger with
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`Trustwave. (D.I. 95 at 3-4) Sections 2.18 and 5.6(c) of the 2015 Agreement demonstrate that
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`Singtel had actual notice of the 2012 Agreement during due diligence. (See id.) Specifically,
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`Section 2.18 references Schedule 2.18 of the Company Disclosure Letter, which identifies the
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`2012 Agreement as a "Material Contract." (Id. Ex. 2 § 2.18; id. Ex. 3 at