Judge Richard G. Andrews recently granted defendant Personalized Media Communication, LLC’s motion to dismiss for lack of personal jurisdiction. Funai Electric Co., Ltd. v. Personalized Media Communication, LLC, C.A. No. 15-558-RGA (D. Del. Jan. 29, 2016). Judge Andrews also vacated his prior order demanding defendant’s counsel show cause why their pro hac vice status should not be revoked for saving defendant’s better argument for its reply brief in support of its motion. In its motion, defendant argued that all of its operations “are conducted in either Texas or Virginia”; and that it has little to no connection to Delaware:
PMC does not regularly conduct business in Delaware. It is not registered to do business in Delaware, nor does it have a registered agent authorized for receipt of service in Delaware. PMC has no offices, employees, agents, real estate, or other assets in the state, nor does it own, operate, or manage any entity located or doing business in Delaware. In addition, PMC does not manufacture or sell any products in Delaware or to Delaware residents.
Id. at 2. Funai argued that personal jurisdiction was proper because defendant consented to jurisdiction, having “previously filed two actions in this court” involving patents that claim priority to the same patent applications as the patents-in-suit. Id. at 2-3. Judge Andrews disagreed because defendant’s prior suits were not brought against Funai. Id. at 5. In short, there was no “logical relationship” between the parties. Id. at 4 (“Under Delaware law, a party can be considered to have consented to jurisdiction by ‘instituting another, related suit’ that has some ‘logical relationship’ to the present suit.” (quoting Foster Wheeler Energy Corp. v. Metallgesellschaft AG, 1993 WL 669447, at *1, 4 (D. Del. Jan. 4, 1993)).
Funai also argued that specific jurisdiction was proper because defendant’s filing patent infringement actions in Delaware constitute transacting business in Delaware, and that the claims at issue here “arise out of” those earlier actions. Id. at 5-6. Again, Judge Andrews disagreed. Defendant’s prior actions “involved different parties and different patents” and a declaratory judgment plaintiff’s action only arises out of defendant’s prior filing of suit if those prior actions were filed to enforce the same patents at issue. Id. at 6-7.