Intellectual Ventures I LLC v. Nikon Corp.

• Decision Date: 01 April 2013
• Docket Number: Civ. No. 11–1025–SLR.
• Citation: 935 F.Supp.2d 787
• Parties: INTELLECTUAL VENTURES I LLC, and, Intellectual Ventures II LLC, Plaintiffs, v. NIKON CORPORATION, Sendai Nikon Corporation, Nikon Americas Inc., and Nikon Inc., Defendants.
• Court: U.S. District Court — District of Delaware

935 F.Supp.2d 787

INTELLECTUAL VENTURES I LLC, and, Intellectual Ventures II LLC, Plaintiffs,

v.NIKON CORPORATION, Sendai Nikon Corporation, Nikon Americas Inc., and Nikon Inc., Defendants.

Civ. No. 11–1025–SLR.

United States District Court, D. Delaware.

April 1, 2013.

Brian E. Farnan, Esquire of Farnan LLP, Wilmington, DE, Of Counsel: John M. Desmarais, Esquire, Alan S. Kellman, Esquire, and John C. Spaccarotella, Esquire, Jonas R. McDavit, Esquire, and Xiao Li, Esquire of Desmarais LLP, for Plaintiffs.

Steven J. Balick, Esquire, Tiffany Geyer Lydon, Esquire, and Andrew C. Mayo, Esquire of Ashby & Geddes, Wilmington, DE, Of Counsel: Jesse J. Jenner, Esquire, Laurence S. Rogers, Esquire, Stuart W. Yothers, Esquire, Andrew T. Radsch, Esquire, and Hiroyuki Hagiwara, Esquire of Ropes & Gray LLP, for Defendants.

MEMORANDUM OPINION

SUE L. ROBINSON, District Judge.

I. INTRODUCTION

On October 26, 2011, plaintiffs intellectual Ventures I LLC and Intellectual Ventures II LLC (collectively “plaintiffs”) filed a complaint alleging patent infringement against defendants Sendai Nikon Corporation (“Sendai”), Nikon Imaging Japan Inc., Nikon Americas Inc., and Nikon, Inc. (D.I. 1) Sendai and Nikon Imaging Japan, Inc. filed a motion to dismiss the complaint for lack of personal jurisdiction or, in the alternative, to dismiss plaintiffs' claims for induced and joint infringement. (D.I. 16) Defendants Nikon Americas Inc. and Nikon, Inc. also moved to dismiss plaintiffs' claims for induced and joint infringement. (D.I. 14) Plaintiffs filed an amended complaint against defendants Sendai, Nikon Corporation, Nikon Americas Inc., and Nikon Inc. (the three Nikon defendants are collectively “defendants”). (D.I. 23)

Pending before the court is Sendai's motion to dismiss for lack of personal jurisdiction or, in the alternative, to dismiss plaintiffs' claims for induced and joint infringement (D.I. 25) and defendants' motion to dismiss plaintiffs' claims for induced and joint infringement (D.I. 28). The court has jurisdiction over this matter pursuant to 28 U.S.C. §§ 1331 and 1338(a). For the reasons that follow, Sendai's motion to dismiss for lack of personal jurisdiction or, in the alternative, to dismiss plaintiffs' claims for induced and joint infringement is granted as to personal jurisdiction, and defendants' motion to dismiss plaintiffs' claims for induced and joint infringement is granted as to joint infringement.

II. BACKGROUND

Plaintiffs are both Delaware limited liability companies, with their principal places of business in Bellevue, Washington. (D.I. 23 at ¶¶ 1–2) Sendai is a Japanese corporation, with its principal place of business in Tokyo, Japan. (D.I. 23 at ¶ 4; D.I. 26 at 3) Nikon Corporation is also a Japanese corporation, with its principal place of business in Tokyo, Japan. (D.I. 23 at ¶ 3) Nikon Americas Inc. is a Delaware corporation and has its principal place of business in Melville, New York. (D.I. 1 at ¶ 5) Nikon Inc. is a New York corporation and has its principal place of business in Melville, New York. (D.I. 1 at ¶ 6)

III. STANDARD OF REVIEWA. Personal Jurisdiction

Rule 12(b)(2) directs the court to dismiss a case when the court lacks personal jurisdiction over the defendant. Fed.R.Civ.P. 12(b)(2). When reviewing a motion to dismiss pursuant to Rule 12(b)(2), a court must accept as true all allegations of jurisdictional fact made by the plaintiff and resolve all factual disputes in the plaintiff's favor. Traynor v. Liu, 495 F.Supp.2d 444, 448 (D.Del.2007). Once a jurisdictional defense has been raised, the plaintiff bears the burden of establishing, with reasonable particularity, that sufficient minimum contacts have occurred between the defendant and the forum to support jurisdiction. See Provident Nat'l Bank v. Cat. Fed. Sav. & Loan Ass'n, 819 F.2d 434, 437 (3d Cir.1987). To meet this burden, the plaintiff must produce “sworn affidavits or other competent evidence,” since a Rule 12(b)(2) motion “requires resolution of factual issues outside the pleadings.” Time Share Vacation Club v. Atlantic Resorts, Ltd., 735 F.2d 61, 67 n. 9 (3d Cir.1984).

To establish personal jurisdiction, a plaintiff must produce facts sufficient to satisfy two requirements by a preponderance of the evidence, one statutory and one constitutional. See id. at 66;Reach & Assocs. v. Dencer, 269 F.Supp.2d 497, 502 (D.Del.2003). With respect to the statutory requirement, the court must determine whether there is a statutory basis for jurisdiction under the forum state's long-arm statute. See Reach & Assocs., 269 F.Supp.2d at 502. The constitutional basis requires the court to determine whether the exercise of jurisdiction comports with the defendant's right to due process. See id.; see also Int'l Shoe Co. v. Washington, 326 U.S. 310, 316, 66 S.Ct. 154, 90 L.Ed. 95 (1945).

Pursuant to the relevant portions of Delaware's long-arm statute, 10 Del. C. § 3104(c)(1)-(4), a court may exercise personal jurisdiction over a defendant when the defendant or its agent:

(1) Transacts any business or performs any character of work or service in the State;

(2) Contracts to supply services or things in this State;

(3) Causes tortious injury in the State by an act or omission in this State;

(4) Causes tortious injury in the State or outside of the State by an act or omission outside the State if the person regularly does or solicits business, engages in any other persistent course of conduct in the State or derives substantial revenue from services, or things used or consumed in the State;

10 Del. C. § 3104(c)(1)-(4) (emphasis added). With the exception of (c)(4), the long-arm statute requires a showing of specific jurisdiction. See Shoemaker v. McConnell, 556 F.Supp.2d 351, 354, 355 (D.Del.2008). Subsection (4) confers general jurisdiction, which requires a greater number of contacts, but allows the exercise of personal jurisdiction even when the claim is unrelated to the forum contacts. See Applied Biosystems, Inc. v. Cruachem, Ltd., 772 F.Supp. 1458, 1466 (D.Del.1991).

If defendant is found to be within the reach of the long-arm statute, the court then must analyze whether the exercise of personal jurisdiction comports with due process, to wit, whether plaintiff has demonstrated that defendant “purposefully avail[ed] itself of the privilege of conducting activities within the forum State,” so that it should “reasonably anticipate being haled into court there.” World–Wide Volkswagen Corp. v. Woodson, 444 U.S. 286, 297, 100 S.Ct. 559, 62 L.Ed.2d 490 (1980) (citations omitted) (emphasis added). For the court to exercise specific personal jurisdiction consistent with due process, plaintiff's cause of action must have arisen from the defendant's activities in the forum State. See Burger King Corp. v. Rudzewicz, 471 U.S. 462, 472, 105 S.Ct. 2174, 85 L.Ed.2d 528 (1985). For the court to exercise general personal jurisdiction consistent with due process, plaintiff's cause of action can be unrelated to defendant's activities in the forum State, so long as defendant has “continuous and systematic contacts with the forum state.” Applied Biosystems, Inc. v. Cruachem, Ltd., 772 F.Supp. 1458, 1470 (D.Del.1991).

B. Induced and Joint Infringement

In reviewing a motion filed under Federal Rule of Civil Procedure 12(b)(6), the court must accept all factual allegations in a complaint as true and take them in the light most favorable to plaintiff. See Erickson v. Pardus, 551 U.S. 89, 94, 127 S.Ct. 2197, 167 L.Ed.2d 1081 (2007); Christopher v. Harbury, 536 U.S. 403, 406, 122 S.Ct. 2179, 153 L.Ed.2d 413 (2002). A court may consider the pleadings, public record, orders, exhibits attached to the complaint, and documents incorporated into the complaint by reference. Tellabs, Inc. v. Makor Issues & Rights, Ltd., 551 U.S. 308, 322, 127 S.Ct. 2499, 168 L.Ed.2d 179 (2007); Oshiver v. Levin, Fishbein, Sedran & Berman, 38 F.3d 1380, 1384–85 n. 2 (3d Cir.1994). A complaint must contain “a short and plain statement of the claim showing that the pleader is entitled to relief, in order to give the defendant fair notice of what the ... claim is and the grounds upon which it rests.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 545, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007) (internal quotation marks omitted) (interpreting Fed.R.Civ.P. 8(a)). A complaint does not need detailed factual allegations; however, “a plaintiff's obligation to provide the ‘grounds' of his entitle[ment] to relief requires more than labels and conclusions, and a formulaic recitation of the elements of a cause of action will not do.” Id. at 545, 127 S.Ct. 1955 (alteration in original) (citation omitted). The “[f]actual allegations must be enough to raise a right to relief above the speculative level on the assumption that all of the complaint's allegations are true.” Id. Furthermore, “[w]hen there are well-ple[d] factual allegations, a court should assume their veracity and then determine whether they plausibly give rise to an entitlement to relief.” Ashcroft v. Iqbal, 556 U.S. 662, 679, 129 S.Ct. 1937, 173 L.Ed.2d 868 (2009). Such a determination is a context-specific task requiring the court “to draw on its judicial experience and common sense.” Id.

Under 35 U.S.C. § 271(b), “[w]hoever actively induces infringement of a patent shall be liable as an infringer.” To demonstrate inducement of infringement, the patentee must establish, first, that there has been direct infringement and, second, that the alleged infringer had “knowledge that the induced acts constitute patent infringement.” Global–Tech Appliances, Inc. v. SEB S.A., ––– U.S. ––––, 131 S.Ct. 2060, 2068, 179 L.Ed.2d 1167 (2011). “Inducement requires evidence of culpable conduct, directed to encouraging another's infringement, not merely that the inducer had knowledge of the direct infringer's activities.” DSU Medical Corp. v. JMS Co., Ltd., 471 F.3d 1293, 1306 (Fed.Cir.2006) (en banc in relevant part).

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