Case 1:20-cv-00765-DAE Document 27 Filed 03/28/22 Page 1 of 26
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`AUSTIN DIVISION
`
`BANDSPEED, LLC,
`
`v.
`
`Plaintiff,
`
`REALTEK SEMICONDUCTOR CORP.,
`
`Defendant.
`
`§
`§
`§
`§
`§
`§
`§
`§
`
`C.A. No. 1:20-cv-00765-LY
`
`DEFENDANT REALTEK SEMICONDUCTOR CORP.’S
`RENEWED RULE 12 MOTION TO DISMISS
`
`

`

`I.
`II.
`
`III.
`
`IV.
`
`V.
`
`Case 1:20-cv-00765-DAE Document 27 Filed 03/28/22 Page 2 of 26
`
`TABLE OF CONTENTS
`
`Page
`
`C.
`
`2.
`
`3.
`
`INTRODUCTION ............................................................................................................. 1
`BACKGROUND ............................................................................................................... 1
`A.
`Procedural History ................................................................................................. 1
`B.
`Bandspeed’s First Amended Complaint Includes Insufficient Jurisdictional
`Allegations. ............................................................................................................ 2
`Realtek Lacks Contacts with, and Does Not Purposefully Direct Any
`Conduct Towards, Texas. ...................................................................................... 3
`THIS COURT LACKS PERSONAL JURISDICTION OVER REALTEK ..................... 4
`A.
`Legal Standard ....................................................................................................... 4
`B.
`Realtek is Not Subject to General Jurisdiction in This District. ............................ 5
`C.
`Realtek is Not Subject to Specific Jurisdiction in This District............................. 6
`1.
`Bandspeed’s claims do not arise out of any activities of Realtek
`that are purposefully directed at Texas. ..................................................... 6
`Specific jurisdiction over Realtek does not exist under the stream-
`of-commerce theory. ................................................................................ 10
`Asserting personal jurisdiction over Realtek would be
`unreasonable and unfair. .......................................................................... 12
`Realtek is Not Subject to Federal Long-Arm Jurisdiction under Rule
`4(k)(2). ................................................................................................................. 14
`THE COURT SHOULD DISMISS BANDSPEED’S FAC BECAUSE OF ITS
`FAILURE TO PROSECUTE AND ITS INEXPLICABLE DELAY IN
`EFFECTING SERVICE .................................................................................................. 16
`A.
`Bandspeed’s FAC Should be Dismissed because Bandspeed Failed to
`Exercise Due Diligence in Attempting Service ................................................... 16
`Bandspeed’s FAC Should be Dismissed Under Rule 41(b) Based on
`Bandspeed’s Failure to Prosecute ........................................................................ 17
`CONCLUSION ................................................................................................................ 18
`
`D.
`
`B.
`
`i
`
`

`

`Case 1:20-cv-00765-DAE Document 27 Filed 03/28/22 Page 3 of 26
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`AFTG-TG, LLC v. Nuvoton Tech. Corp.,
`689 F.3d 1358 (Fed. Cir. 2012)............................................................................................6, 10
`
`Asahi Metal Indus. Co. v. Super. Ct.,
`480 U.S. 102 (1987) ....................................................................................................10, 13, 14
`
`Auto Wax Co. v. Kasei Kogyo Co.,
`No. A 00-531 SS, 2001 WL 1891719 (W.D. Tex. Sept. 26, 2001) .........................................13
`
`Autogenomics, Inc. v. Oxford Gene Tech. Ltd.,
`566 F.3d 1012 (Fed. Cir. 2019)..................................................................................................5
`
`Beverly Hills Fan Co. v. Royal Sovereign Corp.,
`21 F.3d 1558 (Fed. Cir. 1994)............................................................................................10, 12
`
`Blue Spike, LLC v. Texas Instruments, Inc.,
`No. 12-cv-00499, 2014 WL 11829323 (E.D. Tex. Mar. 31, 2014) ...........................................6
`
`Breakall v. Munn,
`No. A-08-CA-485-LY, 2008 WL 11417063 (W.D. Tex. Oct. 9, 2008) ....................................7
`
`Bullard v. Burlington N. Santa Fe Ry. Co.,
`368 Fed. Appx. 574 (5th Cir. 2010) .........................................................................................17
`
`City of El Paso v. Soule,
`991 F. Supp. 812 (W.D. Tex. 1998).........................................................................................13
`
`Coleman v. Sweetin,
`745 F.3d 756 (5th Cir. 2014) ...................................................................................................17
`
`Daimler AG v. Bauman,
`571 U.S. 117 (2014) ...................................................................................................................5
`
`Dillard v. Federal Corp.
`321 F. Supp. 3d 752, 761 (W.D. Tex. 2018)............................................................................13
`
`Elecs. for Imaging Inc. v. Coyle,
`340 F.3d 1344 (Fed. Cir. 2003)..................................................................................................6
`
`Freescale Semi., Inc. v. Amtran Tech. Co.,
`No. A-12-CV-644-LY, 2013 WL 12121034 (W.D. Tex. June 12, 2013) .................6, 7, 10, 12
`
`ii
`
`

`

`Case 1:20-cv-00765-DAE Document 27 Filed 03/28/22 Page 4 of 26
`
`Freudensprung v. Offshore Tech. Servs., Inc.,
`379 F.3d 327 (5th Cir. 2004) .....................................................................................................7
`
`Garnet Digital, LLC v. Apple, Inc.,
`893 F. Supp. 2d 814 (E.D. Tex. 2012) .......................................................................................6
`
`Gomez v. Galman,
`18 F.4th 769 (5th Cir. 2021) ......................................................................................................5
`
`Goodyear Dunlop Tires Operations, S.A. v. Brown,
`564 U.S. 915 (2011) .................................................................................................................10
`
`Hanson v. Denckla,
`357 U.S. 235 (1958) ...................................................................................................................4
`
`Int’l Shoe Co. v. Washington,
`326 U.S. 310 (1945) ...........................................................................................................4, 5, 9
`
`J. McIntyre Mach., Ltd. v. Nicastro,
`564 U.S. 873 (2011) .................................................................................................................10
`
`Johnston v. Multidata Sys. Int’l Corp.,
`523 F.3d 602 (5th Cir. 2008) .................................................................................................5, 6
`
`Lawson v. Aleutian Spray Fisheries Inc.,
`No. C11-0061JLR, 2012 WL 208111 (W.D. Wash. Jan. 24, 2012) ........................................17
`
`Lozano v. Bosdet,
`693 F.3d 485 (5th Cir. 2012) ...................................................................................................16
`
`M-I Drilling Fluids UK Ltd. v. Dynamic Air Ltda.,
`890 F.3d 995 (Fed. Cir. 2018)..................................................................................................12
`
`Med. Sols., Inc. v. C Change Surgical LLC,
`541 F.3d 1136 (Fed. Cir. 2008)..................................................................................................5
`
`Merial Ltd. v. Cipla Ltd.,
`681 F.3d 1283 (Fed. Cir. 2012)................................................................................................14
`
`Moncrief Oil Int’l Inc. v. OAO Gazprom,
`481 F.3d 309 (5th Cir. 2007) .....................................................................................................9
`
`Motion Games, LLC v. Nintendo Co.,
`No. 6:12-cv-878-JDL, 2014 WL 5306961 (E.D. Tex. Oct. 16, 2014) .....................................14
`
`MWK Recruiting, Inc. v. Jowers,
`No. 1:18-cv-444, 2019 WL 7761445 (W.D. Tex. July 29, 2019) ..............................................5
`
`iii
`
`

`

`Case 1:20-cv-00765-DAE Document 27 Filed 03/28/22 Page 5 of 26
`
`Nuance Commc’ns, Inc. v. Abbyy Software House,
`626 F.3d 1222 (Fed. Cir. 2010)..............................................................................................5, 6
`
`Pancho Villa’s Army, LLC v. Tendot Corp. Travel, Inc.,
`No. 1:13-cv-972-LY, 2014 WL 12663098 (W.D. Tex. Aug. 15, 2014) ....................................5
`
`Panda Brandywine Corp. v. Potomac Elec. Power Co.,
`253 F.3d 865 (5th Cir. 2001) (per curiam).................................................................................5
`
`Polar Electro Oy v. Suunto Oy,
`829 F.3d 1343 (Fed. Cir. 2016)............................................................................................5, 10
`
`Red Wing Shoe Co. v. Hockerson-Halberstadt, Inc.,
`148 F.3d 1355 (Fed. Cir. 1998)..................................................................................................5
`
`Sealed Appellant v. Sealed Appellee,
`453 F.3d 415 (5th Cir. 2006) .............................................................................................17, 18
`
`Silicon Laboratories, Inc. v. Cresta Technology Corp
`No. A-14-CA-318-SS, 2014 WL 3530817 (W.D. Tex. July 14, 2014). ..................................11
`
`Sorkin v. Dayton Superior Corp.,
`2006 WL 2141255 (S.D. Tex. July 28, 2006) ..........................................................................11
`
`Synergy Drone LLC v. Parrot S.A.
`No. 1:17-cv-243-LY, 2018 WL 11361758 (W.D. Tex. Apr. 17, 2018) ....................8, 9, 11, 15
`
`Synthes (U.S.A.) v. G.M. Dos Reis Jr. Ind. Com de Equip. Medico,
`563 F.3d 1285 (Fed. Cir. 2009)..........................................................................................13, 15
`
`Touchcom, Inc. v. Bereskin & Parr,
`574 F.3d 1403 (Fed. Cir. 2009)................................................................................................14
`
`Veazey v. Young’s Yacht Sale & Serv., Inc.
`644 F.2d 475, 478 (5th Cir. 1981) ...........................................................................................18
`
`Walden v. Fiore,
`571 U.S. 277 (2014) .....................................................................................................6, 7, 9, 15
`
`World-Wide Volkswagen Corp. v. Woodson,
`444 U.S. 286 (1980) ...................................................................................................................4
`
`iv
`
`

`

`Case 1:20-cv-00765-DAE Document 27 Filed 03/28/22 Page 6 of 26
`
`Other Authorities
`
`Rule 4(f) .........................................................................................................................................16
`
`Rule 4(k)(2) ..........................................................................................................................7, 14, 16
`
`Rule 12(b)(2) ................................................................................................................................1, 4
`
`Rule 41(b) ................................................................................................................................17, 18
`
`v
`
`

`

`Case 1:20-cv-00765-DAE Document 27 Filed 03/28/22 Page 7 of 26
`
`I.
`
`INTRODUCTION
`This lawsuit should have never been brought and cannot be maintained. At the outset, Plaintiff
`Bandspeed fails to identify any activities of Defendant Realtek—a leading fabless semiconductor
`company in Taiwan— that would even arguably give rise to personal jurisdiction in this Court. Realtek
`has no demonstrated connection to Texas. It is headquartered in Taiwan; has no subsidiaries, facilities,
`or operations in Texas; and Bandspeed has offered no facts showing any advertising, marketing, or
`sale by Realtek in this District. Moreover, Bandspeed has provided no evidence that Realtek is
`connected to or purposefully directed any activities to Texas. Instead, it relies on the nationwide
`activities of third parties unrelated to Realtek. As a result, Bandspeed’s allegations fail to establish
`either a good faith or a prima facie basis for personal jurisdiction over Realtek. The Court should
`dismiss the Complaint, with prejudice, for lack of personal jurisdiction under Rule 12(b)(2).
`Bandspeed’s apparent apathy toward its prefiling investigation extends to its prosecution of
`this case. The Court granted Bandspeed’s request for issuance of letters rogatory, for service of the
`Complaint on Realtek, in September of 2020. After sixteen months of inaction, Bandspeed moved for
`alternative service on January 14, 2022, while representing to this Court that “the process of service by
`letters rogatory is still underway.” Dkt. 14 at p. 2. But counsel for Realtek determined—with a simple
`email, that was answered in just a few hours—that the letters rogatory were never received by the
`American Institute in Taiwan, the next recipient in the process after the U.S. Department of State.
`Bandspeed could have easily determined this in late 2000, but never made the effort. Accordingly, the
`Complaint should also be dismissed for failure to prosecute and undue delay in effecting service.
`II.
`BACKGROUND
`A. Procedural History
`On July 2, 2020, Bandspeed filed its original Complaint. ECF No. 1. Because Realtek is not
`registered to do business in Texas and has no registered agent in Texas, its attempt at service
`predictably failed. Next, Bandspeed moved for a Request for Judicial Assistance on Sept. 14, 2020,
`and this Court granted the motion three days later. ECF Nos. 9-12. But there the trail goes cold.
`Though Bandspeed asserts that it “initiated the process for service via letters rogatory” through the
`
`1
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`

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`Case 1:20-cv-00765-DAE Document 27 Filed 03/28/22 Page 8 of 26
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`State Department on November 2, 2020, no request for service of process was ever delivered to the
`American Institute in Taiwan—the first stop on Taiwan’s shores for letters rogatory. See Declaration
`of Jeffrey L. Johnson (“Johnson Decl.”), Ex. B. Over the next fourteen months, it appears that
`Bandspeed never followed up on its request. See ECF No. 14 (stating, purely on “information and
`belief,” that the letters rogatory process “is still underway”). With a simple call or e-mail to the
`American Institute, Bandspeed could have readily learned that the American Institute had not received
`the letters rogatory and then addressed the issue.
`Despite this inattention, over fourteen months later, on January 14, 2022, Bandspeed requested
`leave to make alternative service on Realtek through U.S. counsel. ECF No. 14. This Court granted
`the motion on February 7, 2022. Bandspeed delivered its Complaint—more than 20 months after first
`filing—to Realtek’s counsel on February 8, 2022.
`On February 28, 2022, Realtek filed its original motion to dismiss Bandspeed’s original
`Complaint for lack of personal jurisdiction, failure to prosecute, and failure to allege any acts of direct
`infringement by Realtek. ECF No. 17. Bandspeed responded by filing its First Amended Complaint
`(“FAC”), which dropped its unsupported claims of direct infringement, but doubled down on its flawed
`jurisdictional allegations. See ECF No. 22 (filed March 13, 2022).
`On March 17, 2022, this Court dismissed Realtek’s motion, without prejudice to refiling, in
`light of the newly-filed FAC. ECF No. 25. Realtek hereby renews the relevant parts of its motion.
`B. Bandspeed’s First Amended Complaint Includes Insufficient Jurisdictional
`Allegations.
`In its FAC, Bandspeed acknowledges that Realtek “is a corporation organized and existing
`under the laws of Taiwan, with a place of business located at No. 2 Innovation Road II, Hsinchu
`Science Park, Hsinchu 300, Taiwan.” FAC ¶ 9. Bandspeed then alleges, based on “information and
`belief,” that this Court has personal jurisdiction over Realtek based on boilerplate recitations of
`jurisdictional tests. See FAC ¶¶ 14-19.
`But Bandspeed’s FAC contains no plausible facts supporting jurisdiction. For example,
`Bandspeed alleges in the abstract that Realtek “has solicited business” and “transacted business” in
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`2
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`Case 1:20-cv-00765-DAE Document 27 Filed 03/28/22 Page 9 of 26
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`Texas. FAC ¶ 16. But it again offers no example of any business solicited or transacted in Texas by
`Realtek. See generally, FAC. Indeed, the FAC does not allege a single fact showing that Realtek has
`taken any relevant action whatsoever in Texas. Id.
`Instead, the FAC relies on products made by third-party manufacturers (located outside Texas)
`such as Roku, Asustek and JLab, or still other third parties (also based outside Texas) that retail those
`third-party products, for example Target, Best Buy, Walmart, and Amazon. See, e.g., FAC ¶¶ 20-29.
`But Bandspeed does not claim that Realtek sells directly to these companies in Texas, in the U.S., or
`anywhere else, only that Realtek “provides” (somewhere, to someone) accused products “to be used
`as components in a variety of end-products” that those third parties or their customers make, sell, or
`use in the United States. See, e.g., FAC at ¶¶ 23-25, 27, 29, 60-63, 74-75 (Roku, Asustek, and JLab
`make products using Realtek components); id. at 23, 26, 28, 61, 71, 84 (Best Buy, Target, Walmart
`and Amazon sell the downstream products). Bandspeed also makes no meaningful attempt to allege
`that any downstream activity in the United States is directed or controlled by Realtek. See generally,
`FAC. Similarly, Bandspeed offers no concrete example of any relevant activity in Texas of which
`Realtek is actually aware. See, e.g., FAC ¶¶ 29, 58, 59, 85 (alleging only that Realtek “knew, should
`have known, expected, or should have expected” that its products are sold in Texas).
`C. Realtek Lacks Contacts with, and Does Not Purposefully Direct Any Conduct
`Towards, Texas.
`Realtek’s relevant alleged contacts with Texas are simply non-existent. Realtek is not
`authorized, registered, or licensed to do business in Texas. Lin Decl. ¶ 7. Realtek has no place of
`business or operations in Texas. Id. Realtek does not own or lease any real property, personal property,
`telephone listing, office space or equipment, bank accounts, or other assets in Texas. Id. Bandspeed
`has not identified any Realtek subsidiary, affiliate, or employee in Texas. See generally, FAC.
`The Realtek products Bandspeed accuses are equally devoid of any connection to Texas.
`Bandspeed has not identified any Realtek product sold in Texas by Realtek or imported into Texas by
`Realtek. See generally, FAC. Bandspeed also has not alleged that Realtek sells or offers its products
`to any person or business located in Texas. Id. Rather, Bandspeed alleges vaguely that Realtek
`
`3
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`

`

`Case 1:20-cv-00765-DAE Document 27 Filed 03/28/22 Page 10 of 26
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`“provides” to an unspecified party “Infringing Products to be used as components” in downstream
`products by three other companies—Roku, Asustek and JLab—that are in turn sold through still third-
`party retailers such as Target, Best Buy, Walmart and Amazon. See FAC ¶¶ 38, 47, 50, 60. None of
`these companies is located in Texas,1 and Bandspeed never sets forth facts showing that Realtek
`provides its products “to” any of these companies, much less that it does so in Texas. For good reason:
`Realtek’s general business model is to sell to distributors outside Texas. Lin Decl. ¶ 8; see also FAC
`¶ 20 (alleging Future Electronics and WPG Americas are distributors2). Realtek’s direct customers
`(e.g., distributors) then resell the chips to other third parties that may use them in downstream consumer
`products in places of their own choosing. Lin Decl. ¶ 8. Bandspeed alleged no facts showing that
`Realtek sells directly to any of the companies named by Bandspeed, in Texas or elsewhere. See FAC.
`III.
`THIS COURT LACKS PERSONAL JURISDICTION OVER REALTEK
`A.
`Legal Standard
`Federal due process requires that a non-resident defendant have “minimum contacts” with the
`forum state such that asserting personal jurisdiction over the defendant “does not offend traditional
`notions of fair play and substantial justice.” World-Wide Volkswagen Corp. v. Woodson, 444 U.S.
`286, 291-92 (1980); Int’l Shoe, 326 U.S. at 316. Minimum contacts exist when a defendant
`“purposefully avails itself of the privilege of conducting activities within the forum State, thus invoking
`the benefits and protections of its laws.” Hanson v. Denckla, 357 U.S. 235, 253 (1958). A federal
`court may dismiss an action when personal jurisdiction is absent. Fed. R. Civ. P. 12(b)(2).
`In patent cases, Federal Circuit law determines whether a district court may exercise personal
`
`1 Roku, JLab, and Asustek’s U.S. arms are all located in California. See https://www.roku.com/
`about/contact;
`https://www.jlab.com/pages/about-us-2018;
`https://www.asus.com/us/
`About_ASUS/Facilities-Branches. Target’s and Best Buy’s headquarters are both in Minnesota.
`See https://corporate.target.com/about/locations; https://www.sec.gov/ix?doc=/Archives/edgar/
`data/764478/000076447821000068/bby-20211030x10q.htm.
` Walmart
`is headquartered in
`Arkansas.
` See https://www.sec.gov/Archives/edgar/data/0000104169/000010416922000012/
`wmt-20220131.htm. Amazon is headquartered in Washington State. See https://www.sec.gov/
`Archives/edgar/data/0001018724/000101872422000005/amzn-20211231.htm
`2 Future Electronics is headquartered in Canada. See https://www.futureelectronics.com/contact-
`us. WPG Americas Inc is headquartered in San Jose, CA and “is a member of WPG Holdings, the
`largest electronics distributor in Asia.” See http://wgpacorp.com/about.
`
`4
`
`

`

`Case 1:20-cv-00765-DAE Document 27 Filed 03/28/22 Page 11 of 26
`
`jurisdiction over an out-of-state defendant. Autogenomics, Inc. v. Oxford Gene Tech. Ltd., 566 F.3d
`1012, 1016 (Fed. Cir. 2019); Nuance Commc’ns, Inc. v. Abbyy Software House, 626 F.3d 1222, 1230
`(Fed. Cir. 2010). Personal jurisdiction is proper “in a patent infringement case if two things are true.
`First, jurisdiction must exist under the forum state’s long-arm statute. Second, the assertion of personal
`jurisdiction must be consistent with the limitations of the due process clause.” Med. Sols., Inc. v. C
`Change Surgical LLC, 541 F.3d 1136, 1139 (Fed. Cir. 2008) (internal citations omitted); see also Int’l
`Shoe Co. v. Washington, 326 U.S. 310 (1945). “Because the Texas long-arm statute extends to the
`limits of federal due process, the two-step inquiry collapses into one federal due process analysis.”
`Johnston v. Multidata Sys. Int’l Corp., 523 F.3d 602, 609 (5th Cir. 2008).
`In response to a motion challenging personal jurisdiction, the “plaintiff bears the burden of
`establishing minimum contacts, and upon that showing, the burden shifts to the defendant to prove that
`the exercise of jurisdiction would be unreasonable.” Polar Electro Oy v. Suunto Oy, 829 F.3d 1343,
`1348 (Fed. Cir. 2016). In assessing personal jurisdiction, this Court need not credit conclusory
`allegations, even if uncontroverted. Panda Brandywine Corp. v. Potomac Elec. Power Co., 253 F.3d
`865, 869 (5th Cir. 2001) (per curiam); MWK Recruiting, Inc. v. Jowers, No. 1:18-cv-444, 2019 WL
`7761445 at *3 (W.D. Tex. July 29, 2019); Pancho Villa’s Army, LLC v. Tendot Corp. Travel, Inc., No.
`1:13-cv-972-LY, 2014 WL 12663098, at *2 (W.D. Tex. Aug. 15, 2014). Nor must Court “accept as
`true a legal conclusion couched as a factual allegation.” Gomez v. Galman, 18 F.4th 769, 775 (5th Cir.
`2021) (quoting Papasan v. Allain, 478 U.S. 265, 286 (1986)).
`B.
`Realtek is Not Subject to General Jurisdiction in This District.
`General jurisdiction exists only when a “corporation’s affiliations with the State are so
`continuous and systematic as to render [it] essentially at home in the forum state.” Daimler AG v.
`Bauman, 571 U.S. 117, 138-39 (2014) (emphasis added). Random, fortuitous, or attenuated contacts
`are insufficient. Red Wing Shoe Co. v. Hockerson-Halberstadt, Inc., 148 F.3d 1355, 1359 (Fed. Cir.
`1998). The “paradigm all-purpose forums” for general jurisdiction over a corporation are its place of
`incorporation and principal place of business. Id.
`Realtek is “at home” in Taiwan, not in Texas or anywhere else in the United States. Bandspeed
`
`5
`
`

`

`Case 1:20-cv-00765-DAE Document 27 Filed 03/28/22 Page 12 of 26
`
`does not even allege that Realtek has substantial, continuous, and systematic contacts with Texas. See
`generally, FAC. Rather, the FAC admits that Realtek is a Taiwanese company with its principal place
`of business in Taiwan. FAC ¶ 9; see also Lin Decl. ¶ 5. Realtek cannot be subject to general
`jurisdiction in Texas. See, e.g., Johnston, 523 F.3d at 611-612 (no general jurisdiction over corporation
`that had three percent of total sales to Texas customers and periodically sent employees to Texas);
`Freescale Semi., Inc. v. Amtran Tech. Co., No. A-12-CV-644-LY, 2013 WL 12121034, at *4-5 (W.D.
`Tex. June 12, 2013) (finding no general jurisdiction over a Taiwanese corporation absent an alter-ego
`relationship with a U.S. subsidiary).
`C.
`Realtek is Not Subject to Specific Jurisdiction in This District.
`Specific jurisdiction exists only if sufficient minimum contacts connect the defendant and the
`forum. Courts examine “(1) whether the defendant purposefully directs activities at the forum’s
`residents; (2) whether the claim arises out of or relates to those activities; and (3) whether assertion of
`personal jurisdiction is reasonable and fair.” AFTG-TG, LLC v. Nuvoton Tech. Corp., 689 F.3d 1358,
`1361 (Fed. Cir. 2012); Nuance Commc’ns, Inc. v. Abbyy Software House, 626 F.3d 1222, 1231 (Fed.
`Cir. 2010). The plaintiff must establish minimum contacts under the first two prongs; if successful,
`the defendant must show the exercise of jurisdiction to be unreasonable under the third. Elecs. for
`Imaging Inc. v. Coyle, 340 F.3d 1344, 1350 (Fed. Cir. 2003). None of these prongs have been met.
`1. Bandspeed’s claims do not arise out of any activities of Realtek that are
`purposefully directed at Texas.
`When a litigation arises from allegations that infringing products were used within the forum
`or sold to residents of the forum, the plaintiff must prove that the accused contacts were the result of
`defendant’s own activities, not the activities of third parties. Walden v. Fiore, 571 U.S. 277, 291 (2014)
`(“[I]t is the defendant, not the plaintiff or third parties, who must create contacts with the forum State.”);
`Garnet Digital, LLC v. Apple, Inc., 893 F. Supp. 2d 814, 816 (E.D. Tex. 2012) (“The test … focuses
`on defendant’s actions with the forum state and not a third party’s independent actions”); Blue Spike,
`LLC v. Texas Instruments, Inc., No. 12-cv-00499, 2014 WL 11829323, at *3 (E.D. Tex. Mar. 31, 2014)
`(same). The specific jurisdiction inquiry rests on “the relationship between the defendant, the forum,
`
`6
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`

`

`Case 1:20-cv-00765-DAE Document 27 Filed 03/28/22 Page 13 of 26
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`and the litigation.” Freudensprung v. Offshore Tech. Servs., Inc., 379 F.3d 327, 343 (5th Cir. 2004)
`(quoting Burger King Corp. v. Rudzewicz, 471 U.S. 462, 474 (1985)); see also Walden, 571 U.S. at
`290 (“The proper question is not where the plaintiff experienced a particular injury or effect but
`whether the defendant’s conduct connects him to the forum in a meaningful way.”); Breakall v. Munn,
`No. A-08-CA-485-LY, 2008 WL 11417063, at *4 (W.D. Tex. Oct. 9, 2008) (even foreseeable injury
`in the forum state is not sufficient (citing Panda, 253 F.3d at 869)). Furthermore, a plaintiff cannot
`rely on allegations that a defendant sought to “serv[e] the United States marketplace as a whole,” but
`rather must “present[] evidence showing … purposeful conduct directed specifically at Texas.”3
`Freescale, 2014 WL 1603665, at *6 (emphasis added).
`This Court has faithfully applied these principles under circumstances very similar to
`Realtek’s. In Freescale, defendant MediaTek was a Taiwanese corporation, headquartered in Taiwan,
`that allegedly made and sold components that were “incorporated into products that are sold” in this
`District. 2014 WL 1603665, at *1. It had “no office, sales, or property in Texas; [was] not authorized,
`registered, or licensed to do business in Texas, d[id] not direct any of its activities toward residents of
`Texas; and ha[d] never had a customer located in Texas.” Id. Rather, AmTran manufactured
`televisions using MediaTek chips, and Vizio sold those televisions in the U.S., including the Western
`District of Texas. Id. at n. 1. The evidence showed that “MediaTek expends considerable effort to
`market its current and future chips to AmTran and Vizio”; that MediaTek has regular meetings with
`AmTran to discuss issues of supply and demand, including in the North American market; that it
`provides AmTran and Vizio with technical assistance; and that “MediaTek collaborates closely with
`AmTran and Vizio to help ensure that its products best serve the North American market.” Id. at *4-
`6. Nevertheless, this Court held that specific jurisdiction was lacking because “Freescale has not
`presented evidence showing any purposeful conduct directed specifically at Texas.” Id. Specifically,
`“no evidence demonstrates that any of MediaTek's conduct or activity is any more specifically directed
`at this state than it is at the North American market as a whole.” Id.
`
`3 Bandspeed’s assertion that Rule 4(k)(2) is satisfied is also deficient. See infra at 14-16.
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`Similarly, and more recently, this Court dismissed a complaint for lack of personal jurisdiction
`where only third parties sold or shipped accused products in Texas, and the plaintiff neither pled nor
`showed that the defendant supplier directed or controlled the destination of those products. In Synergy
`Drone LLC v. Parrot S.A., this Court found no jurisdiction where the defendants did not ship products
`to Texas, even though a separate member of the same corporate family controlled U.S. distribution,
`holding that “it is not enough that each of these [defendants] might have predicted that its goods will
`reach Texas.” No. 1:17-cv-243-LY, 2018 WL 11361758, at *3-6. (W.D. Tex. Apr. 17, 2018).
`The Court should reach the same conclusion here. Like MediaTek, Realtek has no direct
`contact with Texas. Lin Decl. ¶¶ 7-9. Nor does it direct any activities specifically at Texas. Realtek’s
`customers, not Realtek, decide where to resell any accused products they buy, and other third parties
`further downstream decide where to ship completed products that may use those chips. Id. Thus,
`Realtek, like MediaTek, has not purposefully availed itself of the privilege of doing business in Texas,
`and it is not subject to personal jurisdiction here. And though Realtek put Bandspeed on notice of this
`glaring omission in its pleadings through its original motion to dismiss, the FAC offers no more than
`did the original Complaint to rebut this straightforward conclusion—there are no factual allegations
`that Bandspeed’s claims arise from any activity that Realtek purposely toward Texas in particular.
`For example, Bandspeed alleges no facts showing that Realtek targeted Texas with its activities
`or that it has any connection to the Texas market. Bandspeed offers no examples of any sales,
`advertising or marketing efforts by Realtek targeting Texas and involving any accused product. See
`generally, FAC. Bandspeed offers no example of Realtek importing any accused product into Texas.
`Id. Bandspeed neither alleges that Realtek directs or controls where its customers send Realtek’s
`products or their own, but instead alleges that Realtek’s accused components are incorporated into
`downstream computer products by other companies (Roku, Asustek, and JLab, headquartered in
`California), and that those consumer product manufacturers choose to offer their own products to still
`other fourth-party retailers (Target, Best Buy, Walmart, and Amazon, headquartered in other states,
`but not Texas) that retail these downstream products nationwide. See supra at 3-4. Bandspeed does
`not allege that Realtek controls any of these companies or directs the locations of its sales. Bandspeed
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`does not even allege a direct relationship between Realtek and these third- and fourth-parties. Id. The
`best it can muster is a conclusory allegation that Realtek “knew” or “should hav