ROBINSON, District Judge
On March 25, 2013, plaintiffs Intellectual Ventures I, LLC ("IV I") and Intellectual Ventures II, LLC ("IV II") (collectively, "plaintiffs") filed a complaint alleging patent infringement against defendants Ricoh Company, Ltd. ("RCL"), Ricoh Americas Corporation ("RAC"), and Ricoh Electronics, Inc. ("REI") (collectively, "defendants"). (D.I.1) Defendants filed a motion to dismiss the complaint for lack of personal jurisdiction over RCL and for failure to state a claim of joint infringement and contributory infringement. (D.I.10)
IV I and IV II are limited liability companies organized and existing under the laws of the State of Delaware, with their principal place of business in Bellevue, Washington. (D.I. 1 at ¶¶ 1-2) RCL is a corporation organized under the laws of Japan, with a principal place of business in Tokyo, Japan. (D.I. 1 at ¶ 3) RAC is a wholly-owned and controlled subsidiary of RCL, and is a corporation organized under the laws of Delaware with a principal place of business in West Caldwell, New Jersey. (D.I. 1 at ¶ 4) REI is also a wholly-owned and controlled subsidiary of RCL, and is a corporation organized under the laws of California with a principal place of business in Tustin, California. (D.I.1 at ¶ 5)
Presently before the court is defendants' motion to dismiss for lack of personal jurisdiction and for failure to state a claim of joint infringement and contributory infringement. The court has jurisdiction over this matter pursuant to 28 U.S.C. §§ 1331 and 1338(a). For the reasons that follow, defendants' motion to dismiss for lack of personal jurisdiction over RCL is granted, and defendants' motion to dismiss for failure to state a claim of joint infringement and contributory infringement is denied.
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. Cal. Fed. Say. & 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 out-side 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
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:
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
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,
In the context of a claim of contributory infringement under 35 U.S.C. § 271(c), a patentee "must, among other things, plead facts that allow an inference that the components sold or offered for sale [by the alleged infringer] have no substantial non-infringing uses," that is, uses that are "`not unusual, far-fetched, illusory, impractical, occasional, aberrant, or experimental.'" In re Bill of Lading, 681 F.3d 1323, 1337 (Fed.Cir.2012) (internal citation omitted). In Walker Digital, LLC v. Facebook, Inc., 852 F.Supp.2d 559, 566-67 (D.Del.2012), this court concluded that the patentee sufficiently pled its allegations of contributory infringement when it asserted that defendant: "(1) had knowledge of the patent; (2) sold products especially made for infringing use; (3) had knowledge of the infringing use; (4) sold products with no substantial non-infringing use; and (5) directly infringed."
When asserting a basis for jurisdiction over a defendant, plaintiffs are first tasked with demonstrating "a statutory basis for jurisdiction under [Delaware's] long-arm statute." Boston Scientific Corp. v. Wall Cardiovascular Techs., LLC, 647 F.Supp.2d 358, 364 (D.Del.2009). Plaintiffs assert two bases for personal jurisdiction under subsections (c)(1)-(4) of Delaware's long-arm statute: (1) general jurisdiction under section (c)(4) based on RCL's systematic presence in Delaware as the head of a "global network;" and (2) "dual jurisdiction" under sections (c)(1) and (c)(4) based on RCL's intentional injection of products into the stream of commerce using established business channels.
In support of finding general jurisdiction over RCL, plaintiffs argue that "RCL is the head of a well-established distribution chain that results in Ricoh products being systematically sold and consumed in Delaware, from which RCL derives substantial revenues." (D.I. 14 at
Earlier this year, the Supreme Court addressed the question of "whether a foreign corporation may be subjected to a court's general jurisdiction based on contacts of its in-state subsidiary." Daimler AG v. Bauman, ___ U.S. ___, 134 S.Ct. 746, 759, 187 L.Ed.2d 624 (2014). The Court rejected as "unacceptably grasping" an approach to finding general jurisdiction wherein a corporation merely "engages in a substantial, continuous, and systematic course of business [in the forum state]." Id. at 761. The Court further rejected the Ninth Circuit's agency theory, which subjects a foreign corporation to jurisdiction "wherever they have an in-state subsidiary or affiliate." Id. at 760.
Here, plaintiffs do not contest that RAC "has not undertaken any direct acts in Delaware, does not directly sell products in the United States, is not registered to do business in Delaware, has no offices or registered agents in Delaware, and has no control or agency relationship with its U.S.-based subsidiaries, Defendants RAC and REI." (D.I. 14 at 10) In light of the Supreme Court's holding in Daimler, plaintiffs' attempt to argue that general jurisdiction is appropriate based on RAC's relationship with its wholly-owned subsidiaries is unavailing.
Plaintiffs argue that RCL satisfies both prongs of Delaware's dual jurisdiction theory, based on the contention that: (1) RCL "established distribution channels in the United States for distribution of [accused] products"; and (2) RCL maintains a website that provides information about how to purchase Ricoh products and permits direct sales inquiries.
There is no evidence in the record that RCL has the requisite intent to sell Ricoh products in Delaware. RCL transfers title of the accused products to REI in Japan, prior to importation. Regardless of the precise functionality of the RCL website, there is no indication that Ricoh products can be directly purchased through it. Altogether, these facts as alleged by plaintiffs are insufficient to support a finding of dual jurisdiction. Because plaintiffs have not established personal jurisdiction over RCL under Delaware's long-arm statute, the court need not address whether the exertion of such jurisdiction satisfies the Due Process Clause.
The court also declines to permit jurisdictional discovery. Such discovery is appropriate only if a plaintiff "presents factual allegations that suggest `with reasonable particularity' the possible existence of the requisite `contacts between [the party] and the forum state.'" Toys "R" Us, Inc. v. Step Two, S.A., 318 F.3d 446, 456 (3d Cir.2003). Given that RCL is a Japanese corporation doing business solely in Asia with its subsidiaries, plaintiffs have not presented sufficient allegations to justify further discovery. Defendants'
Plaintiffs allege that for each of seven patents,
For each patent-in-suit, plaintiffs describe the accused products and include a representative product. For example, plaintiffs describe a laser driver circuit with a bypass switch, and assert that "these components and apparatuses are not staple articles of commerce suitable for substantial non-infringing use...." (D.I. 1 at ¶ 18) Given Form 18's liberal pleading requirements which allow plaintiffs to plead that entire product categories infringe the patent-in-suit, plaintiffs' identification of particular products satisfies the requirement that some part or product contributorily infringe. See generally FotoMedia Techs., LLC v. AOL, LLC, Civ. No. 07-255, 2008 WL 4135906, at *2 (E.D.Tex. Aug. 29, 2008).
For the reasons discussed above, plaintiffs' motion to dismiss for lack of personal jurisdiction over RCL is granted and defendants' motion to dismiss plaintiffs' claims for joint and contributory infringement is denied.
An appropriate order shall issue.
At Wilmington this 12th day of September, 2014, consistent with the memorandum opinion issued this same date;
IT IS ORDERED that:
1. Defendants' motion to dismiss for lack of personal jurisdiction over RCL (D.10) is granted.
2. Defendants' motion to dismiss plaintiffs' claims for contributory and joint infringement (D.I.10) is denied.