Judge Richard G. Andrews recently decided defendants’ motion to dismiss for lack of personal jurisdiction or, in the alternative, to transfer the case to the Northern District of California in Round Rock Research LLC v. ASUSTeK Computer Inc., et al., C.A. No. 11-978-RGA (D. Del. Aug. 20, 2013).
The Court first concluded that plaintiff had not established personal jurisdiction over defendant ACI, a California company, with regard to two out of its ten counts that dealt with two different patents. For one patent, plaintiff had not sufficiently alleged that sales of named accused products had taken place in Delaware, and for the other, it had not sufficiently shown that sales of accused products had taken place prior to the filing of the complaint. See id. at 6-7.
The Court then dismissed the Taiwanese defendant, ASUSTeK, because plaintiff “ha[d] not established that there is personal jurisdiction . . . generally.” Id. at 12. Plaintiff could not establish jurisdiction under the specific jurisdiction provisions of the Delaware long-arm statute, see id. at 7-8, but the Court also considered whether “dual jurisdiction” was an available theory, under which there could be “jurisdiction under a blend of” specific and general jurisdiction provisions of the long-arm statute. Id. at 8. Although other Delaware state and federal decisions have accepted the “dual jurisdiction” theory based on their interpretation of a footnote in LaNuova D&B, S.p.A. v. Bowe Co., Inc., 513 A.2d 764,768 (Del. 1986), see id. at 7-10, the Court did not accept the theory. The Court explained that it did not believe that the dicta in this “footnote supports the conclusion that [the Delaware] Superior Court has interpreted it to have [i.e., to recognize dual jurisdiction].” Id. at 10.
The Court then denied the motion to transfer to the Northern District of California. The remaining defendant ACI was incorporated and headquartered in California, while the plaintiff was a Delaware company with its principal place of business in New York. The Court found that that the Jumara factors weighing in favor of transfer did not outweigh plaintiff’s forum choice or the fact that three other actions were filed contemporaneously in Delaware by plaintiff, making the balance of conveniences “tip strongly enough” in favor of keeping the case in Delaware. Id. at 19. The Court had also gained familiarity with the patents-in-suit in the related actions through a Markman hearing held after the filing of the motion to transfer. Id. at 18 (see link for the Court’s denial of a motion to transfer to the N.D. Cal. in one of the related cases). While the Court explained that “[s]ubsequent events while a motion to transfer has been pending should not be taken into account,” here “it [had been] predictable that [the Court] would likely be gaining [knowledge of the patents-in-suit] through the related cases” and therefore the Court’s familiarity with the patents was “a legitimate concern to factor into the analysis.” Id. (citing In re EMC, 501 F. App’x 973, 976 (Fed. Cir. 2013)).