ORDER RE MOTION TO DISMISS AND MOTION TO TRANSFER OR, IN THE ALTERNATIVE, STAY

WILLIAM ALSUP, District Judge.

INTRODUCTION

In this patent infringement action, six of seven defendants move to transfer this action to the District of Delaware, or in the alternative to stay the action. The remaining defendant moves to dismiss for lack of personal jurisdiction. For the reasons stated below, the motion to dismiss is HELD IN ABEYANCE pending jurisdictional discovery. The motion to transfer or stay is DENIED, reserving on a final determination until jurisdictional discovery is completed.

STATEMENT

Plaintiffs Illumina, Inc., and Illumina Cambridge Ltd. (collectively "Illumina"), supply DNA sequencing equipment. Illumina Cambridge, a wholly-owned subsidiary of Illumina, Inc., owns U.S. Patent No. 7,566,537. Illumina, Inc., is the exclusive licensee of the '537 patent with the right to sue to enforce its exclusivity (Compl. ¶¶ 6-7).

In 2012, defendant Intelligent Bio-Systems, Inc., and non-party the Trustees of Columbia University in the City of New York sued Illumina in the District of Delaware for infringement of several patents relating to technology called "sequencing by synthesis." In its answer to the complaint in the Delaware action, Illumina asserted counterclaims against Intelligent Bio-Systems for infringement of the '537 patent. After Qiagen N.V., a defendant herein, became the ultimate parent of Intelligent Bio-Systems, Illumina added it as a new party in the Delaware action and asserted counterclaims against it. Illumina's counterclaims against both parties related to Intelligent Bio-Systems's use of a chemical group known as a "protecting group" on a nucleotide during a DNA sequencing process in its MAX-Seq and MINI-20 DNA sequencing equipment, each of which sold only one unit. Qiagen N.V. moved to dismiss for lack of personal jurisdiction in Delaware, and Illumina voluntarily dismissed all claims against it without prejudice. Illumina maintained its claims against Intelligent Bio-Systems.

In 2013, the Delaware action was stayed pursuant to a joint request pending inter partes review of both sides' respective patents, although some fact discovery was allowed to go forward. In November 2015, Illumina sought discovery from Illumina Bio-Systems regarding the development and marketing of a new DNA sequencing system called the GeneReader NGS System, which had been announced and promoted by Qiagen N.V. and its subsidiaries (several of which are named as defendants herein). The complaint in Delaware did not assert claims relating to the GeneReader. Nevertheless, Intelligent Bio-Systems produced certain documents regarding the GeneReader. Nothing more came of it in the Delaware action.

In January 2016, Peer Schatz, the CEO of Qiagen N.V. (and of as each of its subsidiaries) gave a presentation at the J.P. Morgan Healthcare Conference in San Francisco. The schedule identified Schatz as a representative of Qiagen N.V. (Walter Decl., Exhs. B, D, E). His presentation included technical details of the GeneReader and included the following statement: "[W]e've created solutions that actually give you results that matter and that will allow therapeutic or scientific decision-making" (id., Exh. C at 5-6).

Qiagen N.V. did not itself sell or develop the GeneReader. Instead, its direct and indirect subsidiaries shared responsibilities (all named as defendants herein) as follows: Qiagen Inc. (USA) sold and marketed it, Qiagen Redwood City developed related software, Intelligent Bio-Systems, Inc., led the technical development, Qiagen GmbH manufactured the reagents, and Qiagen Sciences, LLC, shipped consumables for the product (id., Exh. D). An Executive Committee made all final decisions "that ha[d] a material and/or global impact on QIAGEN's employees, business and future" (id., Exh. F at 2). The signature block on the Executive Committee's charter had no individual's name or actual signature, but it identified the document as emanating from the "QIAGEN Chief Executive Officer" without identifying which Qiagen entity is referenced (id. at 5).

Illumina commenced this action in the Northern District of California in May 2016 alleging that the GeneReader infringes the '537 patent and that each defendant's conduct with regard to the product constituted direct or induced infringement of that patent. Qiagen N.V. moves to dismiss all claims against it for lack of personal jurisdiction, and the remaining defendants move to transfer the action to the District of Delaware or to stay it here pending resolution of claims against Qiagen N.V. (Defendants do not specify the purpose of any stay, but merely note that the case against Qiagen N.V. could be stayed here while the remaining claims could be transferred to Delaware.) After Qiagen N.V. moved to dismiss, it allowed Illumina to take limited informal discovery, which consisted of several informal requests for documents and responses to interrogatories. Qiagen N.V. refused, however, to allow depositions. This order follows full briefing and oral argument.1

ANALYSIS

1. MOTION TO TRANSFER OR STAY.

Defendants contend that this action should be transferred to the District of Delaware, favoring the forum where Illumina filed its first counterclaims for infringement of the '537 against Intelligent Bio-Systems. Neither side addresses whether the law of the Ninth Circuit or the law of the Federal Circuit controls the question of deference to the jurisdiction of an earlier-filed action. Indeed, each side cites decisions from both circuits (as well as district court decisions inconsistently applying either circuit's law). Although there do not appear to be substantial differences between the law of the Ninth Circuit or the law of the Federal Circuit on this issue, this order notes that "[r]esolution of whether [a] second-filed action should proceed presents a question sufficiently tied to patent law that the question is governed by [Federal Circuit] law." Futurewei Techs., Inc. v. Acacia Research Corp., 737 F.3d 704, 708 (Fed. Cir. 2013) (citing Elecs. for Imaging, Inc. v. Coyle, 394 F.3d 1341, 1347 (Fed. Cir. 2005)).2

"When two actions that sufficiently overlap are filed in different federal district courts, one for infringement and the other for declaratory relief, the declaratory judgment action, if filed later, generally is to be stayed, dismissed, or transferred to the forum of the infringement action." Ibid. (citing Merial Ltd. v. Cipla Ltd., 681 F.3d 1283, 1299 (Fed. Cir. 2012)). This deference to the jurisdiction of an earlier-filed action "exists to avoid conflicting decisions and promote judicial efficiency. But the rule is not absolute; exceptions may be made if justified by considerations of judicial and litigant economy and the just and effective disposition of disputes." Ibid. (citations omitted).

Our case does not involve a claim for declaratory relief that mirrors the claims pending in the Delaware action or vice versa. Illumina's claims herein involve a new product, developed after Qiagen acquired Intelligent Bio-Systems — the only party in common with the Delaware action — and an entirely new infringement claim, albeit one directed at the same "protecting group" at issue in the Delaware action. Indeed, Qiagen N.V. denied any relationship to the claims already pending in Delaware when it asserted it could not be subject to personal jurisdiction there. The remaining Qiagen defendants also do not offer any nexus to the claims pending in Delaware, they simply state they would concede to personal jurisdiction in Delaware.

True, our case involves the same patent and the same claim as the Delaware action, but there has been no decision on the merits there. Such a decision is unlikely, inasmuch as Illumina intends to dismiss its claims there (which involved only two sales, one of each of the products at issue therein), but offered no explanation of why that dismissal has not yet occurred. Additionally, Illumina must have believed the use of the same protecting group in the GeneReader constituted sufficient overlap with the claims pending in Delaware to justify seeking discovery into the GeneReader there. On the other hand, Illumina would have needed to file a supplemental complaint in order to expand that case to reach the GeneReader device, and a transfer would deny Illumina the traditional plaintiff's choice of forum. (As stated, the Delaware action involved Illumina's counterclaims.)

This order holds these circumstances do not require us to defer to the jurisdiction of the earlier-filed Delaware action. Accordingly, this order will not transfer the action on the basis of the present record. Nevertheless, jurisdictional discovery may reveal facts that warrant a discretionary transfer, so this order reserves a final determination on the issue until after the personal jurisdiction issue regarding Qiagen N.V. is resolved.

2. QIAGEN N.V. AND PERSONAL JURISDICTION.

Qiagen N.V., a Dutch parent company of various entities around the world, including all of the other defendants herein, contends it is not subject to personal jurisdiction in California. Both sides agree that Federal Circuit law governs the issue of personal jurisdiction. See Pennington Seed, Inc. v. Produce Exchange No. 299, 457 F.3d 1334, 1343 (Fed. Cir. 2006). California's long-arm statute permits the exercise of jurisdiction to the extent consistent with due process. Cal. Code Civ. Proc. § 410.10. Thus, the inquiry collapses to the Federal Circuit's test for the exercise of specific personal jurisdiction: "(1) whether the defendant purposefully directed its activities at residents of the forum state, (2) whether the claim arises out of or relates to the defendant's activities with the forum state, and (3) whether assertion of personal jurisdiction is reasonable and fair." Celgard, LLC v. SK Innovation, Co., 792 F.3d 1373, 1377 (Fed. Cir. 2015). For claims under federal law, a defendant that is not subject to personal jurisdiction based on its contacts in any one state may nevertheless be subject to personal jurisdiction by applying the same test to its contacts with the United States as a whole. Rule 4(k)(2); Touchcom, Inc. v. Bereskin & Parr, 574 F.3d 1403, 1414 (Fed. Cir. 2009).3

Illumina contends that Qiagen N.V. is subject to personal jurisdiction in California based on (i) C.E.O. Peer Schatz's presentation about the GeneReder at the J.P. Morgan Healthcare Conference on behalf of Qiagen N.V., (ii) Qiagen N.V.'s participation in the Executive Committee, and (iii) Qiagen N.V.'s maintenance of a website accessible in California. Thus, Illumina alleges that by promoting the GeneReader in California, by controlling the subsidiaries producing it, and by promoting it on the Internet, Qiagen N.V. induced infringement of the '536 patent in California and can be subject to personal jurisdiction here.

Qiagen N.V. responds that Schatz's presentation at the J.P. Morgan conference targeted investors, not customers, and so cannot be the basis for a claim for infringement. It further argues that the Executive Committee is not a committee of Qiagen N.V., but rather an independent governing body, and, in any case, the Executive Committee does not control the day-to-day operations of the several Qiagen entities. Finally, Qiagen N.V. argues that Qiagen Inc., not Qiagen N.V., operates Qiagen.com. Thus, Qiagen N.V. argues it had no contacts with California that related to the allegations herein.

Although Qiagen N.V.'s participation in the Executive Committee and Schatz's presentation on behalf of Qiagen N.V. at the J.P. Morgan conference occupied center stage in the portion of Illumina's complaint describing Qiagen N.V.'s conduct, Qiagen N.V. addressed those issues only briefly in its initial motion. Instead, it waited for its reply brief to introduce evidence that the Executive Committee was an independent entity and that Schatz's presentation at the J.P. Morgan conference narrowly targeted investors rather than customers.

The day after Qiagen N.V. filed its reply, Illumina filed an objection identifying numerous factual issues raised by Qiagen N.V.'s reply evidence that could not be resolved through the limited discovery it had already conducted. For example, a page on Qiagen.com stated "QIAGEN's Managing Board, which has two members, is accountable for the actions and decisions of the Executive Committee," but it is unclear which Qiagen entity is referenced or how that oversight is carried out in practice (Compl., Exh. 49). Additionally, in the same reply declaration stating that the J.P. Morgan conference focused on investors, Qiagen N.V.'s declarant stated that hundreds of healthcare companies also attended that conference (Gilardi Reply Decl. ¶ 4). Moreover, Schatz's speech referred to the GeneReader's ability to "give you results" regarding therapeutic decision-making, suggesting he intended to promote the product to healthcare providers that might make such decisions as well as investors.

Illumina sought to take depositions of the declarants before the hearing on this motion. Qiagen N.V. offered to arrange a meet and confer to discuss requests for further discovery, although it had made clear throughout the earlier discovery that it did not believe depositions would be proportionate or necessary. Illumina never responded to Qiagen N.V.'s offer.

Qiagen N.V. contends that its reply declarations were not improper, inasmuch as Illumina's theory that Qiagen N.V. controlled the Executive Committee or that the J.P. Morgan conference targeted customers did not expressly appear in the complaint. Additionally, the parties stipulated that Qiagen N.V. could submit additional declarations in its reply, although the stipulation offered no explanation of the scope of those declarations.

Whether or not Qiagen N.V.'s reply evidence is considered, there are too many factual disputes to resolve without more thorough jurisdictional discovery, a problem that has been compounded by Qiagen N.V.'s refusal to allow Illumina to take any depositions. Qiagen N.V.'s declarations do not resolve the enigmatic role of the Executive Committee, nor do they address Schatz's specific statements regarding the therapeutic advantages the GeneReader would provide to members of the audience at the J.P. Morgan conference.

Additionally, pursuant to Rule 4(k)(2), for a claim arising 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." The Federal Circuit has held that courts may apply Rule 4(k)(2) without analyzing jurisdiction for each of the fifty states if "the defendant contends [it] cannot be sued in the forum state and refuses to identify any other where suit is possible . . . ." Touchcom, 574 F.3d at 1415.

Neither side addressed Rule 4(k)(2) in the briefs on this motion. Qiagen N.V. was ordered to identify a state in which it could be sued for the claims herein, but it stated "the present action could not properly have been brought against QIAGEN N.V. in any jurisdiction in the United States" (Dkt. No. 59). Nevertheless, Qiagen N.V.'s response to one of Illumina's interrogatories indicated that "QIAGEN" — without specifying which entity — attended four conferences throughout the United States, including the Annual Meeting of the American Society of Clinical Oncology (which appears likely to have targeted healthcare providers, rather than investors). Illumina's supplemental jurisdictional discovery should also, therefore, address whether Qiagen N.V.'s contacts with the nation as a whole could establish personal jurisdiction for these claims.

CONCLUSION

For the reasons stated above, defendants' motion to transfer or stay is DENIED, reserving on a final determination on this issue until after jurisdictional discovery has concluded. Qiagen N.V.'s motion to dismiss is HELD IN ABEYANCE pending supplemental jurisdictional discovery.

Illumina shall be entitled to two full-day and two half-day depositions, twelve requests for production of documents, and twelve interrogatories. This discovery is in addition to the informal discovery that Qiagen N.V. has already volunteered. Stonewalling will lead to adverse inferences. Overbroad discovery requests will lead to striking without replacement. Counsel shall cooperate to expedite discovery. All jurisdictional discovery shall be completed by AUGUST 25. Illumina shall supplement the record by SEPTEMBER 15, including a brief up to TWENTY PAGES, and Qiagen N.V. may likewise respond by SEPTEMBER 29. A further hearing is hereby scheduled for OCTOBER 13 AT 8:00 A.M.

Meanwhile, general discovery shall proceed as to all other parties, and the briefing and hearing on Qiagen N.V.'s motion for a preliminary injunction shall proceed as scheduled.

IT IS SO ORDERED.