Case 1:20-cv-00765-DAE Document 29 Filed 04/11/22 Page 1 of 26
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`AUSTIN DIVISION
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`
`
`BANDSPEED, LLC,
`
`Plaintiff,
`
`v.
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`REALTEK SEMICONDUCTOR
`CORPORATION,
`
`Defendant.
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
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`BANDSPEED’S RESPONSE TO REALTEK SEMICONDUCTOR
`CORPORATION’S RENEWED RULE 12 MOTION TO DISMISS
`
`
`CASE NO. 1:20-cv-00765-LY
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`
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`

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`Case 1:20-cv-00765-DAE Document 29 Filed 04/11/22 Page 2 of 26
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`TABLE OF CONTENTS
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`I.
`
`REALTEK’S RULE 12 MOTION FAILS ......................................................................... 1
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`A. Background Facts...........................................................................................................1
`
`B. Argument .......................................................................................................................3
`
`1.
`
`Realtek is Subject to Federal Long-Arm Jurisdiction Under Rule 4(k)(2) ..3
`
`A.
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`B.
`
`C.
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`Prong 1: Arising Under Federal Law .............................................. 4
`
`Prong 2: Defendant Is Not Subject to Jurisdiction in Any State’s
`Courts Of General Jurisdiction ....................................................... 4
`
`Prong 3: Exercise of Jurisdiction Must Comport With Due
`Process ............................................................................................ 7
`
`(1)
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`(2)
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`(3)
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`Realtek Purposefully Directs Its Activities at Residents of
`The U.S. .............................................................................. 7
`
`Bandspeed’s Claim Arises Out of or Relates to Realtek’s
`Activities With the U.S. ...................................................... 9
`
`Assertion of Personal Jurisdiction Over Realtek in the
`U.S. Is Reasonable and Fair ................................................ 9
`
`2.
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`Specific Jurisdiction ...................................................................................11
`
`A.
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`Bandspeed’s Claims Arise Out of Realtek’s Activities
`Purposefully Directed to Texas ..................................................... 11
`
`B.
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`Stream of Commerce .................................................................... 12
`
`II.
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`BANDSPEED TIMELY AND PROPERLY SERVED REALTEK WITH THE FAC ... 13
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`A. Background Facts.........................................................................................................14
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`B. Argument .....................................................................................................................15
`
`1.
`
`2.
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`Bandspeed Exercised Reasonable Diligence in Effecting Service Under
`Fed. R. Civ. P. 4; Dismissal Without Prejudice is Not Warranted ............16
`
`Realtek Cannot Meet the High Standard for Dismissal With Prejudice
`Under Fed. R. Civ. P. 41(b) .......................................................................17
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`i
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`Case 1:20-cv-00765-DAE Document 29 Filed 04/11/22 Page 3 of 26
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`TABLE OF AUTHORITIES
`
`CASES
`
`A.T.N. Indus., Inc. v. Gross,
`No. 4:14-CV-02743, 2016 WL 362309 (S.D. Tex. Jan. 29, 2016) ........................................... 16
`
`Alpine View Co. v. Atlas Copco AB,
`205 F.3d 208 (5th Cir. 2000) ...................................................................................................... 3
`
`Asahi Metal Indus. Co., Ltd. v. Superior Court,
`480 U.S. 102 (1987) .................................................................................................................. 13
`
`Autogenomics, Inc. v. Oxford Gene Tech. Ltd.,
`566 F.3d 1012 (Fed. Cir. 2009) .................................................................................................. 3
`
`Beverly Hills Fan Co. v. Royal Sovereign Corp.,
`21 F.3d 1558 (Fed. Cir. 1994) ........................................................................................ 9, 11, 13
`
`Blockbuster, LLC v. Grupo Mizbe, S.A.,
`No. 13-62042-CIV, 2015 WL 12712060 (S.D. Fla. Apr. 8, 2015) ..................................... 18, 19
`
`Burger King Corp. v. Rudzewicz,
`105 S.Ct. 2174 (May 20, 1985) ................................................................................................ 10
`
`Coleman v. Sweetin,
`745 F.3d 756 (5th Cir. 2014) .............................................................................................. 18, 19
`
`Commonwealth Scientific and Indus. Research Org. v. Mediatek Inc.,
`No. 6:12-cv-578 (E.D. Tex. Sept. 12, 2013) ............................................................................. 11
`
`Fe Ry. Co.,
`368 F. App'x 574 (5th Cir. 2010) .............................................................................................. 18
`
`Freescale Semi., Inc. v. Amtran Tech. Co.,
`No. A-12-CV-644-LY, 2013 WL 12121034 (W.D. Tex. June 12, 2013) .............................. 4, 7
`
`Freescale v. Amtran Technology Co., Ltd.,
` 2014 WL 1603665 (W.D. Tex. 2014) ........................................................................................ 6
`
`Frito-Lay N. Am., Inc. v. Medallion Foods, Inc.,
`867 F. Supp. 2d. 859 (E.D. Tex. 2012) ..................................................................................... 11
`
`Ham v. La Cienega Music Co.,
`4 F.3d 413 (5th Cir. 1993) ........................................................................................................ 13
`
`Hetronic Int’l, Inc. v. Hetronic Germany GmbH,
`10 F.4th 1016 (10th Cir. 2021) ................................................................................................... 7
`
`ii
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`Case 1:20-cv-00765-DAE Document 29 Filed 04/11/22 Page 4 of 26
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`Lawson v. Aleutian Spray Fisheries, Inc.,
`No. C11-0061JLR, 2012 WL 208111 (W.D. Wash. Jan. 24, 2012) ......................................... 18
`
`Lozano v. Bosdet,
`693 F.3d 485 (5th Cir. 2012) .................................................................................................... 16
`
`Merial Ltd. v. BASF Agro B.V.,
`681 F.3d 1283 (Fed. Cir. 2012) ...................................................................................... 3, 4, 5, 6
`
`Polar Electro Oy v. Suunto Oy,
`829 F.3d 1343 (Fed. Cir. 2016) .................................................................................................. 9
`
`Sealed Appellant v. Sealed Appellee,
`452 F.3d 415 (5th Cir. 2006) .................................................................................................... 18
`
`Silent Drive, Inc. v. Strong Indus., Inc.,
`326 F.3d 1194 (Fed. Cir. 2003) .................................................................................................. 3
`
`Synergy Drone LLC v. Parrot S.A., et al.,
`No. 1:17-cv-243-LY, 2018 WL 11361758 (W.D. Tex 2018) ..................................................... 5
`
`Synthes (U.S.A.) v. GMReis,
`563 F.3d (Fed. Cir. 2009) ............................................................................................... 7, 10, 12
`
`U.S. S.E.C. v. Shehyn,
`No. 04 CIV. 2003 (LAP), 2008 WL 6150322 (S.D.N.Y. Nov. 26, 2008) .................... 18, 19, 20
`
`Veazey v. Young's Yacht Sale & Serv., Inc.,
`644 F.2d 475 (5th Cir. 1981) .................................................................................................... 18
`
`Viam Corp. v. Iowa Export-Import Trading Co.,
`84 F.3d 424 (Fed. Cir. 1996) ................................................................................................ 9, 10
`
`Wapp Tech Ltd. P'ship v. Seattle SpinCo Inc.,
`No. 4:18-CV-00469, 2020 WL 3791520 (E.D. Tex. July 7, 2020) .......................................... 16
`
`World-Wide Volkswagen Corp. v. Woodson,
`444 U.S. 286 (1980) .................................................................................................................. 12
`
`RULES
`
`Fed. R. Civ. P. 4(k)(2)................................................................................................................. 3, 9
`
`Fed. R. Civ. P. 41(b) ..................................................................................................................... 17
`
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`iii
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`Case 1:20-cv-00765-DAE Document 29 Filed 04/11/22 Page 5 of 26
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`Plaintiff Bandspeed, LLC (“Bandspeed”) files its Response to Realtek Semiconductor
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`Corporation’s (“Realtek”) Renewed Rule 12 Motion to Dismiss (the “Motion”).
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`I.
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`REALTEK’S RULE 12 MOTION FAILS
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`Realtek’s Rule 12 Motion to Dismiss for lack of jurisdiction fails. Realtek is subject to the
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`Federal Long-Arm Statute under Rule 4(k)(2) because: (i) this is, indisputably, a federal claim
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`under patent law; (ii) Realtek, by its own admission, is not subject to jurisdiction in any state's
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`court of general jurisdiction; and (iii) Realtek has sufficient contacts with the U.S. as a whole to
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`satisfy due process standards and justify the application of Federal law. Realtek’s half-hearted
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`identification of the Northern District of California (“NDCal”) as an appropriate forum (1) fails
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`because Realtek has not met its burden that personal jurisdiction would be appropriate in the
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`NDCal and (2) amounts to nothing more than blatant forum shopping.
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`Realtek is subject to specific jurisdiction because it purposefully directs activities to
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`residents of this District. Further, Realtek is subject to specific jurisdiction under the stream of
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`commerce theory because it sells Realtek products that are placed into the U.S. market, including
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`products that are sold within the Western District of Texas.
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`A.
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`BACKGROUND FACTS
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`Realtek is a Taiwanese company. Doc. 22 at ¶ 9. By its own admission, Realtek is “‘at
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`home’ in Taiwan, not in Texas or anywhere else in the United States.” Doc. 27 at 5. Realtek alleges
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`it does not have any place of business, operations, real or personal property, or assets anywhere in
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`the U.S.
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`Realtek has distributors for supply of its products to the U.S., including Future Electronics
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`and WPG Americas, Inc. Doc. 22 at ¶¶ 20-21. Realtek’s website lists contact information for
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`technical service that is directed specifically to its U.S. customers. Doc. 22 at ¶ 20.
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`1
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`Case 1:20-cv-00765-DAE Document 29 Filed 04/11/22 Page 6 of 26
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`Realtek has been a regular participant in the International Consumer Electronics Show
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`(CES) in Las Vegas where it unveiled infringing products directed for sale to the U.S. market over
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`the past several years, including in 2017, 2018, 2019 and 2020. Doc. 22 at ¶¶ 22.
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`Realtek’s infringing products are embedded in products sold in the U.S. and this District,
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`including products sold by Roku, Asustek, and JLab. Doc. 22 at ¶¶ 23-29. These products are sold
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`at large retailers in the U.S. and this District like Best Buy, Walmart, Target, and Amazon. Doc.
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`22 at ¶¶ 23-28, 61, 71 and 84.
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`Realtek’s recent annual reports express Realtek’s ongoing intent and purpose to further
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`direct and expand its sale of infringing products in America. Doc. 22 at ¶¶ 30-31.
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`Realtek has substantial contacts with the U.S. by virtue of its substantial contacts with
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`standards bodies. Realtek does business with the WiFi Alliance, located in Austin, Texas. Doc. 22
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`at ¶ 32. Realtek has certified over 100 products through the WiFi Alliance, including certain
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`Infringing Products (e.g., the infringing RTL8822BE and RTL8822CE). Id.
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`Realtek has dealings with the Bluetooth SIG—the standards organization that oversees the
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`development of Bluetooth standards and the licensing of the Bluetooth technologies. The
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`Bluetooth SIG is located in Kirkland, Washington. Doc. 22 at ¶ 32. For example, Realtek certified
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`to the Bluetooth SIG that the infringing RTL88XX chip series is compliant with Bluetooth Core
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`Specification 5.0. Doc. 22 at ¶ 65.
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`Realtek submitted the Realtek RTL8822CE to the U.S. Federal Communications
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`Commission (“FCC”) for approval to sell the Realtek RTL8822CE in the U.S., including in Texas.
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`The FCC assigned a product ID to the Realtek RTL8822CE. The FCC Test Reports for the Realtek
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`RTL8822CE provided to the FCC by Realtek identifies Realtek as the manufacturer of the product.
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`Doc. 22 at ¶ 67-68. The FCC provided Realtek with a Grant of Equipment Authorization for the
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`2
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`Case 1:20-cv-00765-DAE Document 29 Filed 04/11/22 Page 7 of 26
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`RL8822CE, authorizing “operation at approved frequencies and sale within the USA.” Doc. 22 at
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`¶ 70. See also id. at ¶ 81-83 (Realtek submitted for and received approval for Realtek RTL8763B
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`to be sold in the U.S.).
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`B.
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`ARGUMENT
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`Federal Circuit law governs personal jurisdiction in patent cases. Autogenomics, Inc. v.
`
`Oxford Gene Tech. Ltd., 566 F.3d 1012, 1016 (Fed. Cir. 2009). When the parties have not
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`conducted jurisdictional discovery, a plaintiff need only make a prima facie showing that the
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`defendant is subject to personal jurisdiction, and the pleadings and affidavits are to be construed
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`in the light most favorable to the plaintiff. Silent Drive, Inc. v. Strong Indus., Inc., 326 F.3d 1194,
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`1201 (Fed. Cir. 2003). Further, courts will resolve all factual conflicts in favor of the party seeking
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`jurisdiction. Alpine View Co. v. Atlas Copco AB, 205 F.3d 208, 215 (5th Cir. 2000).
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`1.
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`Realtek is Subject to Federal Long-Arm Jurisdiction Under Rule 4(k)(2)
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`Realtek is subject to jurisdiction under the Fed. R. Civ. P. 4(k)(2), which states:
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`Federal Claim Outside State-Court Jurisdiction. For a claim that arises under
`federal law, serving a summons or filing a waiver of service establishes personal
`jurisdiction over a defendant if:
`(A) the defendant is not subject to jurisdiction in any state’s courts
`of general jurisdiction; and
`(B) exercising jurisdiction is consistent with the United States
`Constitution and laws.
`
`Fed. R. Civ. P. 4(k)(2). For a court to exercise personal jurisdiction over a defendant under this
`
`rule, “(1) the plaintiff's claim must arise under federal law, (2) the defendant must not be subject
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`to jurisdiction in any state’s courts of general jurisdiction, and (3) exercise of jurisdiction must
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`comport with due process.” Merial Ltd. v. BASF Agro B.V., 681 F.3d 1283, 1294 (Fed. Cir. 2012).
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`As this Court has stated, “Federal Rule of Civil Procedure 4(k)(2) would appear to control in cases
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`where a foreign component manufacturer explicitly targets the United States market as a whole,
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`with no particular focus on one state over another.” Freescale Semi., Inc. v. Amtran Tech. Co., No.
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`3
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`Case 1:20-cv-00765-DAE Document 29 Filed 04/11/22 Page 8 of 26
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`A-12-CV-644-LY, 2013 WL 12121034 at n.2 (W.D. Tex. June 12, 2013). This is precisely the
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`case here.
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`In Freescale—a case repeatedly cited by Realtek in its Motion—this Court considered
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`whether Mediatek had sufficient minimum contacts with this District to confer jurisdiction. While
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`this Court found that Mediatek’s contacts with Texas were insufficient, it found that an analysis
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`under Fed. R. Civ. P. 4(k)(2) of Mediatek’s national contacts would yield a different result: “The
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`outcome here would almost certainly be different if the court could consider MediaTek’s national
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`contacts, instead of only those associated with Texas.” Freescale, 2013 WL 12121034 at n.2.
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`a.
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`Prong 1: arising under federal law
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`It is undisputed that Bandspeed’s patent claims arise under federal law. Doc. 27 at 14.
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`b.
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`Prong 2: defendant is not subject to jurisdiction in any state’s courts of
`general jurisdiction
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`The Federal Circuit has adopted a burden-shifting mechanism so that “if the defendant
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`contends that he cannot be sued in the forum state and refuses to identify any other where suit is
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`possible, then the federal court is entitled to use Rule 4(k)(2).” Merial Ltd. v. Cipla Ltd., 681 F.3d
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`1283, 1294 (Fed. Cir. 2012). That is, Realtek may avoid the application of the rule only when it
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`designates a suitable forum in which the plaintiff could have brought suit. See id. However,
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`“[c]onsistent with that obligation, a defendant does not identify ‘a more appropriate state’ by
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`suggesting an alternative forum with no basis for personal jurisdiction but for its consent. Absent
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`some independent basis for jurisdiction, neither forum is manifestly more appropriate than the
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`other in such situations…” Id. (emphasis in original). Realtek “cannot defeat Rule 4(k)(2) by
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`simply naming another state.” Id. Rather, Realtek’s burden under the negation requirement entails
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`identifying a forum “where the plaintiff could have brought suit—a forum where jurisdiction
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`4
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`Case 1:20-cv-00765-DAE Document 29 Filed 04/11/22 Page 9 of 26
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`would have been proper at the time of filing, regardless of consent.” Merial, 681 F.3d at 1294
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`(emphasis in original). Realtek fails to meet its burden.
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`Realtek improperly identifies NDCal as a forum for which personal jurisdiction would be
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`appropriate. Doc. 27 at 14. Realtek’s identification is akin to an improper motion to transfer as
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`Realtek has done exactly what the Federal Circuit counseled against—it simply “nam[ed] another
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`state” without sufficient justification. Merial, 681 F.3d at 1294. Realtek fails to show that
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`Bandspeed “could have brought suit [in] a forum where jurisdiction would have been proper at the
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`time of filing.” Id.
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`Realtek points to Roku, JLab, and Asustek’s U.S. subsidiary—all located in California—
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`as evidence of contacts with California. It then argues there is no allegation of a “direct relationship
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`between Realtek and the U.S. businesses of Roku, JLab and Asustek but only that it ‘provides’
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`accused products that those companies acquire and incorporate into their products.” Doc. 27 at 15.
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`Realtek’s Motion undermines its attempt to forum-shop to California when it states that “[t]his
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`Court has held that actual knowledge of such sales by a member of the same corporate family does
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`not suffice to create minimum contacts. See Synergy, 2018 WL 11361758, at *4. Possible
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`knowledge of sales by unrelated third parties falls well short of even that failing mark.” Doc. 27
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`at 8. If Realtek’s interpretation of the law is accurate, possible sales by these companies is likewise
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`insufficient to confer jurisdiction in NDCal.
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`Realtek again attacks its own position that NDCal could be a proper forum when it states:
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`“‘[A]ttenuated contacts’ such as these ‘are not sufficient to establish jurisdiction.’
`Moncrief Oil Int’l Inc. v. OAO Gazprom, 481 F.3d 309, 312 (5th Cir. 2007). Realtek
`cannot be said to have purposely directed its relevant activities at residents of Texas
`when the FAC offers no facts concerning any Realtek sales, advertising, or
`marketing efforts targeting Texas and does not allege that Realtek wields discretion
`over where products supplied to its distributors might be resold. See Walden, 571
`U.S. at 291 (‘[I]t is the defendant, not … third parties, who must create contacts
`with the forum State.’). This Court should refuse, as it has before, to exert
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`5
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`Case 1:20-cv-00765-DAE Document 29 Filed 04/11/22 Page 10 of 26
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`‘jurisdiction solely as the result of … the unilateral activity of another party or a
`third person.’ Freescale, 2014 WL 1603665, at *1-2.”
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`Doc. 27 at 9. By its own admission, Realtek’s use of distributors and unrelated third parties within
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`NDCal are insufficient to confer jurisdiction. NDCal thus cannot be an appropriate forum.
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`Moreover, Realtek’s identification of the NDCal is litigation-strategy gamesmanship—a
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`practice cautioned against by the Federal Circuit. See Merial, 681 F.3d at 12951 (mentioning
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`potential incentives for gamesmanship where litigants could seek preferred forum by mere
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`declaration of amenability to personal jurisdiction in alternate forum). Tellingly, in its initial
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`Motion to Dismiss (filed prior to this Renewed Motion to Dismiss), Realtek did not identify
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`NDCal—or any other forum—where it would be subject to jurisdiction. Realtek’s blatant forum-
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`shopping must be rejected. See Doc. 12.
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`Finally, Realtek fails to actually consent to NDCal. In the sentence prior to identifying the
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`NDCal, Realtek states that it would consent only “if this Court concluded that Realtek’s contacts
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`with the United States as a whole are sufficient to confer jurisdiction.” Doc. 27 at 14. Realtek’s if-
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`then construct is a conditional consent; not an actual consent. Only if the Court concludes its
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`contacts with the United States are sufficient, would it then identify NDCal.
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`Realtek must both meet its burden to prove NDCal is an appropriate forum and consent to
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`jurisdiction there. It has not done either. Realtek argues throughout its brief that its contacts with
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`NDCal are insufficient to confer jurisdiction and fails to consent to the jurisdiction. To be sure, if
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`1 “[T]he incentives for gamesmanship under a contrary rule would be particularly acute in such
`cases because the defaulting party could use a simple, unilateral statement of consent not only to
`achieve transfer into a forum it considers more convenient (or less convenient for its opponent),
`but also to undo an adverse final judgment for the chance to litigate from a clean slate.” Merial,
`681 F.3d at 1295.
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`6
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`Case 1:20-cv-00765-DAE Document 29 Filed 04/11/22 Page 11 of 26
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`this Court dismisses this case, and Bandspeed refiles in NDCal, Realtek will challenge jurisdiction
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`in that forum as well. Realtek has failed to meet its burden.
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`c.
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`Prong 3: exercise of jurisdiction must comport with due process
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`Under Rule 4(k)(2), the Court must consider whether “(1) defendant has purposefully
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`directed its activities at residents of the forum, (2) the claim arises out of or relates to the
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`defendant's activities with the forum, and (3) assertion of personal jurisdiction is reasonable and
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`fair.” Synthes, 563 F.3d at 1297. Rule 4(k)(2) “contemplates a defendant’s contacts with the entire
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`United States, as opposed to the state in which the district court sits.” Id. at 1295. Thus, the Court
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`must conduct a nationwide minimum contacts analysis. Id.; see also Freescale, 2013 WL
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`12121034 at n.2.
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`(1) Realtek purposefully directs its activities at residents of the U.S.
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`Realtek’s contacts with the U.S. are continuous and extensive such that it purposefully
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`directs it activities here. Realtek’s dealings with the FCC to obtain authorization to sell infringing
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`products in the U.S. is alone sufficient to establish minimum contacts. See Hetronic Int’l, Inc. v.
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`Hetronic Germany GmbH, 10 F.4th 1016, 1031 (10th Cir. 2021) (Under Rule 4(k)(2) analysis,
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`finding sufficient minimum contacts that demonstrate defendants purposefully directed their
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`activities at the forum (the U.S.) based on the defendants’ attempts to obtain FCC authorization to
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`sell products in the U.S.). Specifically, Realtek submitted the Realtek RTL8822CE and the
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`RTL8763B to the FCC for approval to sell these infringing products in the U.S. Doc. 22 at ¶¶ 67-
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`68 (RTL8822CE) and ¶¶ 81-83 (RTL8763B). The FCC awarded Realtek a Grant of Equipment
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`Authorization for these products, authorizing “operation at approved frequencies and sale within
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`the USA.” Doc. 22 at ¶ 70 (RTL8822CE) and ¶ 83 (RTL8763B). Realtek’s FCC dealings alone
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`shows that it purposefully directs its activities to the U.S. See Hetronic Int’l, 10 F.4th at 1031.
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`7
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`Case 1:20-cv-00765-DAE Document 29 Filed 04/11/22 Page 12 of 26
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`Not only did Realtek get authorization for these infringing products to be sold in the U.S.,
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`Realtek’s RTL8822CE and RTL8763B are found in products actually sold in the U.S. and in this
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`District. See Doc. 22 at ¶¶ 26 (offer to sell product containing Realtek’s infringing RTL8822CE
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`in Austin, Texas at Best Buy) and ¶¶ 28, 84 (offer to sell product containing Realtek’s infringing
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`RTL8763BFJ in Austin, Texas at Target).
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`In addition, Realtek purposefully directs its activities to the U.S. in the following ways:
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`• Realtek distributors supply infringing products to the U.S. Doc. 22 at ¶¶ 20-21.
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`• Realtek’s website provides technical service directed specifically to its U.S. customers.
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`Doc. 22 at ¶ 20.
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`• Realtek infringing products are presented to U.S. customers at the International Consumer
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`Electronics Show (CES) in Las Vegas. Doc. 22 at ¶¶ 22.
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`• Realtek’s annual reports express Realtek’s ongoing intent and purpose to further direct and
`
`expand its sale of infringing products in America. Doc. 22 at ¶¶ 30-31.
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`• Realtek has business dealings with the WiFi Alliance, located in Austin, Texas. Doc. 22 at
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`¶ 32, including certifying over 100 products, including certain Infringing Products (e.g., the
`
`RTL8822BE and RTL8822CE) through the WiFi Alliance. Id.
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`• Realtek has dealings with the Bluetooth SIG—the standards organization that oversees the
`
`development of Bluetooth standards and the licensing of the Bluetooth technologies. Doc. 22 at ¶
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`32. Realtek certified to the Bluetooth SIG that the infringing RTL88XX chip series is compliant
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`with Bluetooth Core Specification 5.0. Doc. 22 at ¶ 65.
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`Based on Realtek’s cumulative contacts with the U.S., in addition to Realtek seeking FCC
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`authorization to sell infringing products—which alone establishes minimum contacts with the
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`8
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`Case 1:20-cv-00765-DAE Document 29 Filed 04/11/22 Page 13 of 26
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`U.S.— Realtek cannot credibly argue it has not purposefully directed its activities at residents of
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`the U.S.
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`(2) Bandspeed’s claim arises out of or relates to Realtek’s activities
`with the U.S.
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`Realtek’s activities, as set forth above, all relate to certification, authorization, servicing
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`and/or distribution of the infringing products and thus arise out of or relate to Bandspeed’s patent
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`infringement claims.
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`(3) assertion of personal jurisdiction over Realtek in the U.S. is
`reasonable and fair
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`The “plaintiff bears the burden of establishing minimum contacts, and upon that showing,
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`the burden shifts to the defendant to prove that the exercise of jurisdiction would be unreasonable.”
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`Polar Electro Oy v. Suunto Oy, 829 F.3d 1343, 1348 (Fed. Cir. 2016). Realtek fails to make any
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`showing that the assertion of personal jurisdiction in this forum (the U.S.) would not be reasonable
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`and fair. While Realtek does conduct such an analysis with respect to the state of Texas, it does
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`not do so with respect to the nationwide minimum contacts analysis required by Fed. R. Civ. P.
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`4(k)(2). Doc. 27 at 14-16. Realtek has failed to meet its burden and waived the argument.
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`Nevertheless, exercise of jurisdiction over Realtek in the United States would be reasonable
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`and fair. The exercise of jurisdiction is unreasonable only in “the rare situation in which the
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`plaintiff’s interest and the state’s interest in adjudicating the dispute in the forum are so attenuated
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`that they are clearly outweighed by the burden of subjecting the defendant to litigation within the
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`forum.” Beverly Hills Fan Co. v. Royal Sovereign Corp., 21 F.3d 1558, 1568 (Fed. Cir. 1994). The
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`test of reasonableness and fairness is “a multi-factored balancing test that weighs any burdens on
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`the defendant against various countervailing considerations, including the plaintiff's interest in a
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`convenient forum and the forum state's interest in resolving controversies flowing from in-state
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`events.” Viam Corp. v. Iowa Export-Import Trading Co., 84 F.3d 424, 429 (Fed. Cir. 1996) (citing
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`Case 1:20-cv-00765-DAE Document 29 Filed 04/11/22 Page 14 of 26
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`Burger King, 471 U.S. at 477). This test requires balancing the following factors: “(1) the burden
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`on the defendant; (2) the interests of the forum state; (3) the plaintiff’s interest in obtaining relief;
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`(4) the interstate judicial system's interest in obtaining the most efficient resolution of
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`controversies; and (5) the interest of the states in furthering their social policies.” Viam Corp., 84
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`F.3d at 429.
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`Factor 1: The burden on Realtek. The burden on Realtek is minimal. In Synthes, the
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`Federal Circuit held that requiring a Brazilian defendant to travel to the U.S. from Brazil to defend
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`against a patent infringement suit was “not unduly burdensome.” Synthes, 563 F.3d at 1299. The
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`travel time from Taiwan to the U.S. is about the same. Compare Ex. 1 (travel from Brazil to U.S.
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`at 10 hours 30 minutes) with Ex. 2 (travel from Taiwan to U.S. at 10 hours 50 minutes). Further,
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`Realtek’s long history of attending CES in Las Vegas shows that it can and does travel to the U.S.
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`regularly.
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`Factor 2: the United States’s interest in adjudicating the dispute. The U.S. has an interest
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`in enforcing its patent laws against infringers within its borders regardless of the nationalities
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`involved. This factor thus does not indicate that exercising personal jurisdiction over Realtek
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`would be a constitutional violation.
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`Factor 3: Bandspeed’s interest in obtaining relief in the United States. Bandspeed’s
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`interest in obtaining relief in a U.S. court is paramount. No other sovereign will enforce U.S. patent
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`law.
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`Factor 4: the interstate judicial system’s interest in obtaining the most efficient
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`resolution of controversies. The U.S. is the most efficient forum in which to adjudicate a dispute
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`involving U.S. patent law. The case can only be adjudicated in the U.S. Synthes, 563 F.3d at 1300.
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`Case 1:20-cv-00765-DAE Document 29 Filed 04/11/22 Page 15 of 26
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`Factor 5: the shared interest of the states in furthering fundamental substantive policies.
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`Only the United States has an interest in enforcing its patent laws. Synthes, 563 F.3d at 1300.
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`Realtek failed to make any showing that the exercise of jurisdiction would be unreasonable
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`in the U.S. and waived the argument. Further, all factors favor Bandspeed.
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`2.
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`Specific Jurisdiction
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`a.
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`Bandspeed’s claims arise out of Realtek’s activities purposefully directed
`to Texas
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`The assertion of personal jurisdiction over Realtek is reasonable and fair. Texas is the
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`second most populated state in the U.S. See Ex. 3, Commonwealth Scientific and Indus. Research
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`Org. v. Mediatek Inc., No. 6:12-cv-578, at 5 (E.D. Tex. Sept. 12, 2013). Realtek cannot target the
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`U.S. market without also targeting the Western District of Texas. See id. (finding the same factors
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`relevant for personal jurisdiction in the Eastern District of Texas); see Beverly Hills Fan Co., 21
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`F.3d at 1564, 1566–68 (holding that an ongoing distribution relationships leading to a significant
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`number of accused products being sold in the forum was sufficient for exercise of personal
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`jurisdiction); Frito-Lay N. Am., Inc. v. Medallion Foods, Inc., 867 F. Supp. 2d. 859, 867–68 (E.D.
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`Tex. 2012) (finding that placing the accused products in the stream of commerce, knowing the
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`destination of the products, and reaping the benefit of sales in the forum was sufficient to exercise
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`personal jurisdiction over the defendant). Realtek’s infringing products are embedded in products
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`sold in this District, including products sold by Roku, Asustek and JLab. Doc. 22 at ¶¶ 23-29. The
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`infringing products are sold at large retailers in this District, like Best Buy, Walmart, Target and
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`Amazon. Doc. 22 at ¶¶ 23-28, 61, 71 and 84. Moreover, Realtek does business with the WiFi
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`Alliance, located in Austin, Texas. Doc. 22 at ¶ 32. Realtek has certified over 100 products,
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`including the infringing RTL8822BE and RTL8822CE, through the WiFi Alliance. Id.
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`Case 1:20-cv-00765-DAE Document 29 Filed 04/11/22 Page 16 of 26
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`Because Realtek’s activities within Texas are sufficient to establish minimum contacts, the
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`Court must next determine whether assertion of jurisdiction over Realtek is reasonable and fair.
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`Synthes, 563 F.3d at 1299. To determine whether exercising personal jurisdiction would comport
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`with “fair play and substantial justice,” the Court must apply the multi-factor test of reasonableness
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`and fairness, but this time as to this forum, rather than the United States as a whole.
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`Factor 1: The burden on Realtek. The burden on Realtek is minimal. In Synthes, the
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`Federal Circuit found that requiring a Brazilian defendant to travel to the U.S. from Brazil to
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`defend against a patent infringement suit was “not unduly burdensome.” Synthes, 563 F.3d at 1299.
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`The travel time from Taiwan to Texas is relatively similar.
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`Factor 2: Texas’s interest in adjudicating the dispute. Texas has an interest in enforcing
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`patent laws against infringing products sold within its borders. This factor thus does not indicate
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`that exercising personal jurisdiction over Realtek would be a constitutional violation.
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`Factor 3: Bandspeed’s interest in obtaining relief in Texas. Bandspeed’s interest in
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`obtaining relief in Texas is significant. Bandspeed is based in Aust