`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF OREGON
`PORTLAND DIVISION
`MENTOR GRAPHICS CORPORATION,
`)
`an Oregon corporation,
`Plaintiff,
`
`No. CV-10-954-HU
`
`))
`
`)
`)
`
`v.
`)
`EVE-USA, INC., a Delaware
`Corporation, and EMULATION AND)
`VERIFICATION ENGINEERING, )
`S.A., formed under the laws of)
`France,
`
`))
`
`ORDER
`
`))
`
`)
`Defendants.
` )
`HUBEL, Magistrate Judge:
`In this patent infringement action, defendants EVE-USA and
`EVE-SA, move to stay discovery pending resolution of their motion
`to dismiss for lack of personal jurisdiction, or alternative motion
`to transfer. I grant the motion in part and deny it in part.
`In its response to the motion to stay, plaintiff has agreed to
`stay all but jurisdictional discovery pending resolution of
`defendants' pending motion to dismiss or transfer. Thus, with
`regard to merits discovery, defendants' motion is granted.
`1 - ORDER
`
`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 3:10-cv-00954-MO Document 63 Filed 12/15/10 Page 2 of 6 Page ID#: 756
`
`Also in response to the motion to stay, plaintiff has narrowed
`its requested jurisdictional discovery to one interrogatory, five
`requests for production of documents, and four topics for
`deposition, for each of the defendants. Sapoznikow Declr. at ¶ 10.
`I deny defendants' motion as to these limited jurisdictional
`discovery requests.1
`District courts have discretion in determining whether to
`permit jurisdictional discovery. Boschetto v. Hansing, 539 F.3d
`1011, 1020 (9th Cir. 2008), cert. denied, 129 S. Ct. 1318 (2009).
`A court abuses its discretion if there is a clear showing "that
`denial of discovery results in actual and substantial prejudice to
`the complaining litigant. Discovery may be appropriately granted
`where pertinent facts bearing on the question of jurisdiction are
`controverted or where a more satisfactory showing of the facts is
`necessary." Id. (internal quotation omitted). 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." Pebble Beach Co. v. Caddy, 453 F.3d 1151, 1160
`(9th Cir. 2006) (internal quotation omitted); see also Boschetto,
`539 F.3d at 1020 (denial of the plaintiff's request for discovery,
`"which was based on little more than a hunch that it might yield
`jurisdictionally relevant facts, was not an abuse of discretion.").
`
` At oral argument on the motion to stay discovery,
`1
`plaintiff's counsel recited a slightly different list of limited
`jurisdictional discovery requests: two interrogatories, five
`requests for production of documents, and one corporate
`deposition, for each defendant. The Court assumes the parties
`will resolve the discrepancy during the parties' discovery
`scheduling discussion.
`2 - ORDER
`
`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 3:10-cv-00954-MO Document 63 Filed 12/15/10 Page 3 of 6 Page ID#: 757
`
`Plaintiff cites to a District of Arizona case for the
`proposition that "[a]lthough some courts require that a plaintiff
`make a prima facie showing of jurisdiction prior to a court
`allowing a party to conduct discovery, the Ninth Circuit does not."
`Seaboard Sur. Co. v. Grupo Mexico, S.A., No. 06-0134, 2006 U.S.
`Dist. LEXIS 31068, at *7 (D. Ariz. May 12, 2006). In support, the
`District of Arizona court cited cases from the Southern District of
`California and the District of Idaho. Id. The court, quoting the
`Southern District of California case, noted that because, in the
`Ninth Circuit, a plaintiff may withstand a motion to dismiss for
`lack of personal jurisdiction absent an evidentiary hearing by
`making out a prima facie case of jurisdictional facts, it would be
`"'counterintuitive to require a plaintiff, prior to conducting
`discovery, to meet the same burden that would be required in order
`to defeat a motion to dismiss.'" Id. (quoting Orchid Biosciences,
`Inc. v. St. Louis Univ., 198 F.R.D. 670, 673 (S.D. Cal. 2001))
`(emphasis in Orchid Biosciences).
`Rather than requiring a prima facie showing to justify
`jurisdictional discovery, plaintiff argues that only a "colorable
`basis of personal jurisdiction" is necessary. In support,
`plaintiff cites to a 2007 Central District of California case,
`Mitan v. Feeney, 497 F. Supp. 2d 1113, 1119 (C.D. Cal. 2007) ("In
`order to obtain discovery on jurisdictional facts, the plaintiff
`must at least make a 'colorable' showing that the Court can
`exercise personal jurisdiction over the defendant.").
`Defendants here criticize plaintiff's reliance on this
`citation because the Mitan court cited a Seventh Circuit case, not
`a Ninth Circuit case, in support of its "colorable" standard.
`3 - ORDER
`
`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 3:10-cv-00954-MO Document 63 Filed 12/15/10 Page 4 of 6 Page ID#: 758
`
`Mitan, 497 F. Supp. at 1119 (citing Central States, S.E. & S.W.
`Areas Pension Fund v. Reimer Express World Corp., 230 F.3d 934, 946
`(7th Cir. 2000)). However, the Mitan court also cited to eMag
`Solutions, LLC v. Toda Kogyo Corp., 2006 WL 3783548, at *2 (N.D.
`Cal. Dec.21, 2006), which in turn explained that "[a]lthough the
`Ninth Circuit has not ruled directly on this question, . . . other
`circuits have held that a plaintiff is not entitled to discovery
`without making a colorable or prima facie showing of personal
`jurisdiction." (citing cases; footnote omitted). The eMag court
`then cited Orchid Biosciences for the proposition that it would be
`"counterintuitive" to require a prima facie showing in order to
`obtain discovery to be used to make a prima facie showing to defeat
`a pending motion to dismiss. eMag, 2006 WL 2783548, at *2. The
`eMag court explained that it found "the reasoning of the Orchid
`Biosciences court to be persuasive" and that in "the absence of any
`definitive Ninth Circuit authority," the court had "discretion to
`permit limited jurisdictional discovery without a full prima facie
`showing of personal jurisdiction by the plaintiffs." Id.
`Thus, Mitan, the case relied on by plaintiff for the
`"colorable" argument, did not rely solely on a Seventh Circuit case
`but instead, cited to other district court cases within the Ninth
`Circuit which supported its holding. Importantly, defendants here
`cite to no Ninth Circuit authority expressly holding that a prima
`facie showing of personal jurisdiction is required to justify
`jurisdictional discovery. I agree that the reasoning in Orchid
`Biosciences makes the most sense.
`Plaintiff articulates more than an attenuated basis for
`personal jurisdiction and puts forth more than "bare allegations."
`4 - ORDER
`
`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 3:10-cv-00954-MO Document 63 Filed 12/15/10 Page 5 of 6 Page ID#: 759
`
`Plaintiff relies on the Declaration of John Mawer, an employee of
`plaintiff's whose duties include the marketing, sales, and support
`of plaintiff's Veloce emulators. He discusses emulators generally
`and explains how they are installed and the process of negotiating
`a sale. He notes it takes months to negotiate the sale, and he
`describes the requirements of a technical evaluation. He also
`discusses facts he learned in April and June 2010 regarding the
`parties' "common customer's" intended use of the product at issue.
`This is a sufficient "colorable" showing of personal jurisdiction
`to justify the limited jurisdictional discovery is seeks.
`Plaintiff indicated at oral argument that it relies on the
`declaration of its own employee because defendants maintain non-
`disclosure agreements with their customers. Defendants argued that
`assuming plaintiff was correct in its representation regarding such
`agreements, plaintiff was nonetheless required to attempt to obtain
`jurisdictional facts before filing the case and to plead its
`inability to obtain the relevant information in the Complaint
`should defendants refuse to provide it. However, I note that the
`logical inference of defendants' motion to stay discovery is that
`any pre-filing inquiry by plaintiff to defendants or its Oregon
`customer regarding an impending sale of the product by defendants
`to the customer, would have been met with resistance. This further
`supports plaintiff's right to the limited jurisdictional discovery
`it now seeks.
`Finally, at oral argument defendants noted that there are
`several specific facts regarding an offer to sell that are required
`to establish personal jurisdiction in an offer to sell infringement
`claim. It is reasonable to allow plaintiff to obtain limited
`5 - ORDER
`
`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 3:10-cv-00954-MO Document 63 Filed 12/15/10 Page 6 of 6 Page ID#: 760
`
`jurisdictional discovery on these issues.
`CONCLUSION
`Defendants' motion to stay discovery [25] is granted in part
`and denied in part.
`IT IS SO ORDERED.
`Dated this 15th day of December , 2010.
`
`/s/ Dennis J. Hubel
`
`Dennis James Hubel
`United States Magistrate Judge
`
`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
`
`6 - ORDER