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No Second Bite at the Apple: Dismissal under Duplicative-Litigation Doctrine

The US Court of Appeals for the Federal Circuit affirmed a district court’s dismissal of a second case between the same parties and asserting the same patent under the duplicative-litigation doctrine. Arendi S.A.R.L. v. LG Elecs. Inc., Case No. 2021-1967 (Fed. Cir. Sept. 7, 2022) (Prost, Chen, Stoll, JJ.)

Arendi sued LG and others for infringement of several patents. Pursuant to Delaware’s local rules requiring identification of accused products, Arendi identified hundreds of LG products as infringing four asserted claims of the patent relevant on appeal. For those accused products, Arendi provided one “exemplary” infringement claim chart for LG’s Rebel 4 phone. LG objected to Arendi, stating that it should have provided charts for all accused products.

As the litigation proceeded, the parties agreed on eight products as representative but, despite LG’s repeated objection, Arendi did not provide claim charts for any additional products during fact discovery. Instead, Arendi’s opening expert report on infringement provided claim charts for seven non-Rebel 4 representative products for the first time. LG moved to strike those portions of the expert report. The district court granted that motion. Arendi did not supplement its claim charts in response to the court’s order and instead filed another complaint in Delaware, thus creating a second concurrent case asserting the same patent against LG. After the district court granted LG’s motion to dismiss the second suit, Arendi appealed.

The Federal Circuit explained the standard for assertion of the duplicative-litigation doctrine, which “prevents plaintiffs from ‘maintain[ing] two separate actions involving the same subject matter at the same time in the same court … against the same defendant.’” Whether two cases involve the same subject matter depends on the extent of factual overlap of the asserted patents and accused products. There was no dispute that the same patent was asserted in both cases, but Arendi disputed that the cases involved the same accused products, citing the district court’s order striking its expert report as evidence that the non-Rebel 4 products were not at issue in the first case.

Like the district court, the Federal Circuit disagreed. The Court distinguished between accusing products and satisfying discovery obligations regarding those products. Arendi listed the non-Rebel 4 products in its disclosure of accused products, served interrogatories about them, received discovery on them and included non-Rebel 4 products in its expert report. Thus, even though Arendi “failed to fulfill its discovery obligations” as to those products, which made its expert report untimely, the non-Rebel 4 products were still accused, at issue and litigated in the first case. Thus, dismissal of the second case under the duplicative-litigation doctrine was not an error.

Practice Note: In a footnote, the Federal Circuit acknowledged the similarity of the duplicative-litigation doctrine to res judicata (claim preclusion). Although both doctrines involve an inquiry into whether claims in the second suit are repetitious, unlike res judicata, the duplicative-litigation doctrine does not require a final judgment in the first case.




Too Quick to Be Lit—Need to Serve That Complaint First

The US Court of Appeals for the Eleventh Circuit reversed a default judgment and monetary award in favor of the plaintiff, which was issued in a case where the plaintiff filed (but never served) an amended complaint in a copyright infringement action. The Court concluded that the amended complaint stated a new claim for relief but was not properly served on the defendants in accordance with the Federal Rules of Civil Procedure. Anthony Campbell v. Rayshawn Bennett et al., Case No. 21-10978 (11th Cir. Sept. 7, 2022) (Wilson, Branch, Lagoa, JJ.) (Lagoa, J. concurring)

In 2015, Anthony Campbell (professionally known as Rackboy Cam) wrote and recorded a song called “Everything Be Lit,” and registered his copyright with the US Copyright Office in February 2017. Later, in 2018, Rackboy Cam filed suit against June James, Rakim Allen, Rayshawn Bennett (professionally known as YFN Lucci) and Think It’s a Game Records (TIG) for copyright infringement based on Bennett’s 2016 recording and release of a similar song, “Everyday We Lit.” The complaint alleged infringement under 17 U.S.C. §§ 106 and 501 and sought “an award of … actual damages, trebled, as well as all profits Defendants derived from infringing the Plaintiff’s Copyright in the Work,” statutory damages and injunctive relief.

James and Allen failed to respond to the initial complaint and the district court entered a default against them. Rackboy Cam later filed an amended complaint, requesting for the first time an award of actual damages in the form of “all profits Defendants derived, jointly and severally,” from the infringing work. In the amended complaint, Rackboy Cam did not request statutory damages. As before, James and Allen did not respond. Rackboy Cam ultimately settled with the other defendants, and they were dismissed from the action.

The district court ultimately entered a default judgment against James and Allen, awarding almost $1.5 million in profits, jointly and severally, as well as prejudgment interest, a permanent injunction, a perpetual 50% running royalty against future infringement and costs to Rackboy Cam.

James moved the district court to set aside the default, arguing that he was not properly served with the initial complaint—an argument rejected by the district court. The district court concluded that because James defaulted prior to the filing of the amended complaint, and since the amended complaint did “not allege or request new or additional relief from Allen and James,” the plaintiff was not required to have served it on James under Fed. R. Civ. P. 5. Rackboy Cam then moved for entry of a default judgment and requested the above award. The district court granted the motion and James appealed.

The issue before the Eleventh Circuit was whether the amended complaint contained a new claim for relief—joint and several liability for profits—and whether Rackboy Cam was therefore required to serve the amended complaint.

Under Rule 5, service of a pleading filed after the initial complaint is not required on a party who is in default for failing to appear, unless the pleading asserts a [...]

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Implied Copyright License to Photographs of Artist Formerly Known as Prince

The US Court of Appeals for the Eighth Circuit upheld a ruling that a marketer had an implied copyright license to distribute marketing materials containing digital copies of photographs of the late musical artist Prince. Beaulieu v. Stockwell, Case No. 21-3833 (8th Cir. Aug. 30, 2022) (Gruender, Benton, Grasz, JJ.)

Allen Beaulieu was Prince’s personal photographer for five years, taking thousands of photos during multiple world tours. Beaulieu registered a copyright for these photos in 1984. In 2014, Beaulieu decided to publish a book of his photos. He hired (and entered into contracts with) Thomas Crouse to write and publish the book and Clint Stockwell to assist in scanning and storing digital copies of the photos. There was significant interest in the book after Prince’s death in 2016. In May 2016, Beaulieu gave Stockwell an unknown number of uncatalogued photos to be digitized. At about the same time, Stockwell sent a press packet containing a digital photo slideshow and press release to potential investors, including Charles Sanvik.

The collaboration with Stockwell and the others eventually fell apart, and Beaulieu demanded his photos back. Beaulieu’s lawyer retrieved some of the photos from Stockwell’s home, but Beaulieu did not make an inventory of the photos that were returned. Beaulieu sued Stockwell, Crouse and Sanvik for copyright infringement (among various other property torts). The district court granted summary judgment to the defendants on all claims and found that Stockwell had an implied license to create and distribute the press release containing Beaulieu’s photos. Beaulieu appealed.

Addressing Beaulieu’s copyright claim, the Eighth Circuit focused on the district court’s finding of an implied license. An implied license is an affirmative defense to a copyright infringement claim. The Court explained that a nonexclusive implied license may be found where a person requests the creation of a work, the creator makes the particular work and delivers it to the person who requested it, and the licensor intends that the licensee-requestor copy and distribute the work. The Court also explained that such an implied license could be implied from conduct. The Court recounted the details of the contract between Beaulieu and Stockwell, which included provisions permitting the use of the digital photos for “promotional and marketing” purposes. The Court also noted that Beaulieu was informed of the marketing plans and was sent drafts of the marketing emails, including the digital photo slideshow, to which Beaulieu did not object. The Court found that Beaulieu’s receipt of these materials, along with his continuing interactions with the collaborators thereafter, implied his approval of the marketing plan and demonstrated an implied license to the photographs.




Present-Tense Claim Terms Not Sufficient to Require Actual Operation

The US Court of Appeals for the Federal Circuit affirmed a US International Trade Commission (Commission) decision that found no violation of Section 337 due to noninfringement. The Court disagreed with the Commission that the use of present-tense claim terms required actual operation to be shown to prove infringement, but nevertheless affirmed the Commission’s finding because the patentee failed to establish that the accused products were capable of carrying out the claimed functionality. INVT SPE LLC v. ITC, Case No. 20-1903 (Fed. Cir. Aug. 31, 2022) (Newman, Taranto, Chen, JJ.)

In 2018, INVT filed a complaint at the Commission alleging a Section 337 violation by various cell phone companies. INVT asserted that five of its patents were infringed by the 3G and LTE networking standards used by mobile devices (such as cell phones) to communicate with base stations (such as cell phone towers). INVT withdrew two of the asserted patents during the course of the investigation, and the Administrative Law Judge (ALJ) issued an initial determination holding that there was no Section 337 violation because none of the three remaining patents were infringed. The Commission did not disturb that decision on review, and INVT appealed on two of the three asserted patents in June 2020.

Briefing during the appeal was extended several times, and as a result, oral argument did not occur until November 2021. The Federal Circuit then asked for supplemental briefing regarding whether there could be any relief on one of the patents scheduled to expire in March 2022. The Court ultimately issued its decision at the end of August 2022, more than two years after the appeal was filed.

In its decision, the Federal Circuit first held that the appeal was moot as to the expired patent. For the remaining patent, the dispute over infringement resolved to the question of whether the claims required actual operation or could instead be met by mere capability. On that point, the Court reversed the ALJ’s determination that the claims required actual operation. According to the Court, the present-tense claim language used (i.e., “a data obtaining section that demodulates and decodes”) was not significantly different from the sort that is usually interpreted to merely require capability (e.g., “for demodulating and decoding”). But the Court then held that the actual operation of the base stations was relevant to determining whether the accused mobile devices were capable of performing one of the particular claimed functions. The Court thus affirmed the finding of no infringement because INVT had failed to show that the base stations actually operated in a way that would allow the mobile devices to be capable of carrying out the claimed functionality.

Alexander Ott appeared for respondent ZTE at the Commission in this matter.




IPR Estoppel Applies to Claim Not Addressed During Pre-SAS Proceeding

In the companion district court case to the Supreme Court’s 2019 Thryv v. Click-to-Call decision regarding the scope of review for inter partes review (IPR) decisions, the US Court of Appeals for the Federal Circuit addressed what it characterized as “a rather unusual set of circumstances” to find that the accused infringer was estopped from challenging in district court the validity of a claim for which the Patent Trial & Appeal Board (Board) had refused to institute IPR. Click-to-Call Techs. LP v. Ingenio, Inc., Case No. 22-1016 (Fed. Cir. Aug. 17, 2022) (Stoll, Schall, Cunningham, JJ.)

Click-to-Call filed suit against Ingenio alleging patent infringement of 16 claims. Ingenio filed a petition for IPR challenging the 16 claims and one additional dependent claim. The Board only partially instituted the IPR, and in its final written decision addressed and found persuasive un-patentability grounds based on a Dezonno reference but refused to consider grounds based on a Freeman reference (leaving one of the asserted claims unaddressed). Ingenio had successfully requested a stay of the district court suit pending resolution of the IPR. During the appeal of the Board’s decision regarding the IPR, the Supreme Court in SAS Institute, Inc. v. Iancu, overruled the practice of partial institutions. However, Ingenio never sought remand under SAS for the Board to consider its challenge to the unaddressed asserted claim.

After the IPR appeal had run its course, the district court lifted the stay and Ingenio moved for summary judgment of invalidity. Ingenio argued that the unaddressed asserted claim (which was the only asserted claim not found unpatentable in the IPR) was invalid based on the same Dezonno reference that Ingenio had used against the other asserted claims. Click-to-Call argued that 35 U.S.C. § 315(e)(2) estopped Ingenio from raising this invalidity ground. Click-to-Call also moved to amend its selection of asserted claims to add two additional claims that were not at issue in the IPR. The district court found that Dezonno anticipated the unaddressed asserted claim and denied Click-to-Call leave to amend its asserted claims. Click-to-Call appealed.

Click-to-Call argued that Ingenio was estopped from asserting invalidity of the unaddressed asserted claim. The Federal Circuit agreed and found that IPR estoppel applied. Specifically, the Court found that district court erred by only analyzing common law issue preclusion, focusing on whether the argument had been “actually litigated” instead of following the language of IPR estoppel under § 315(e)(2), which estops grounds that “reasonably could have [been] raised.” The Court found that the statutory language precluded Ingenio from arguing that Dezonno anticipated the unaddressed asserted claim. The Court explained that Ingenio’s IPR petition included not only a challenge to the unaddressed asserted claim based upon Freeman, but also unpatentability challenges to other claims based on Dezonno. The Court viewed this as evidence of Ingenio’s awareness of Dezonno as an anticipatory ground that it “reasonably could have raised” in the IPR. The Court was unpersuaded by Ingenio’s arguments that there was no estoppel with regard [...]

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Yes, and It Counts! Single Purchase in Forum Establishes Personal Jurisdiction over Infringer

The US Court of Appeals for the Seventh Circuit affirmed exercise of personal jurisdiction over a foreign online retailer for a trademark infringement claim where the trademark owner purchased the only allegedly infringing article sold in the forum. NBA Properties, Inc. v. HANWJH, Case No. 21-2909 (7th Cir. Aug. 16, 2022) (Ripple, Scudder, JJ.)

NBA Properties owns the trademarks for the National Basketball Association (NBA) and NBA teams. HANWJH is a China-based online retailer that sells allegedly infringing NBA branded products on a well-known e-commerce site. HANWJH offered 205 allegedly infringing products that were available for purchase in Illinois, the forum state. HANWJH’s only online order in Illinois was made by an investigator for NBA Properties who purchased a pair of basketball shorts for delivery to an Illinois address. The shorts were delivered to the Illinois address before NBA Properties filed suit against HANWJH.

NBA Properties sued HANWJH for trademark infringement and counterfeiting under 15 U.S.C. § 1114 and false designation of origin under 15 U.S.C. § 1125(a) in the Northern District of Illinois. NBA Properties sought and received a temporary restraining order and preliminary injunction, including a temporary asset restraint on HANWJH’s bank account. After HANWJH failed to timely answer the complaint, NBA Properties moved for default judgment. HANWJH moved to dismiss the case for lack of personal jurisdiction, arguing the following:

  • Operating a website is not sufficient on its own to establish personal jurisdiction.
  • A single transaction by the plaintiff cannot support the exercise of personal jurisdiction.
  • Even if the exercise of personal jurisdiction were otherwise appropriate, such exercise would offend the traditional notions of fair play and substantial justice.

The district court denied HANWJH’s motion to dismiss and entered a default. HANWJH failed to object to the motion for default judgment, and the district court entered a final judgment. HANWJH appealed.

The Seventh Circuit reviewed the “minimum contacts” International Shoe criterion before turning to a more recent line of cases applying this standard to online retailers. Citing its 2020 decision in Curry v. Revolution Laboratories, the Court noted that the minimum contacts requirement is satisfied if “the defendant reasonably could foresee that its product would be sold in the forum.” The Court reasoned that allowing customers to order products from a website to the forum and then fulfilling an order to the forum can form the basis of personal jurisdiction—even when the only orders to the forum were made by the plaintiff, as long as the orders were made before filing suit. Applying these principles, the Court found that HANWJH had purposefully directed conduct at Illinois by establishing an online store, demonstrating a willingness and capacity to ship goods to Illinois and intentionally shipping an infringing product to an Illinois address. The Court explained that it was irrelevant that only a single allegedly infringing article was sold in Illinois and that it was purchased by the plaintiff, because the proper focus of the analysis was on HANWJH’s purposeful conduct. The Court also concluded that HANWJH’s [...]

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Single T-Shirt Sale Can’t Clothe Bare-Bones Personal Jurisdiction Claim

The US Court of Appeals for the Eighth Circuit affirmed a district court’s dismissal of a trademark infringement suit for lack of personal jurisdiction, finding that the trademark owner failed to allege that the alleged infringer could reasonably anticipate being hauled into court in Missouri. Brothers and Sisters in Christ, LLC v. Zazzle, Inc., Case No. 21-1917 (8th Cir. Aug. 2, 2022) (Smith, Benton, Kelly, JJ.)

Brothers and Sisters in Christ (BASIC) is a Missouri-based clothing company that owns the trademark “love happens.” Zazzle is a California-based online retailer. BASIC sued Zazzle in a Missouri district court for trademark infringement, alleging that Zazzle used its nationally available website to advertise and sell goods in Missouri. BASIC further alleged that in 2019, Zazzle sold and shipped a t-shirt bearing a purportedly infringing “love happens” logo to at least one Missouri resident. The district court granted Zazzle’s motion to dismiss for lack of personal jurisdiction under Fed. R. Civ. P. 12(b)(2). BASIC appealed.

Reviewing the issue de novo, the Eighth Circuit affirmed the dismissal. The Court explained that because the Lanham Act does not authorize nationwide personal jurisdiction, the Court was required to apply Missouri’s long-arm statute and the federal due process clause. Given that Missouri’s long-arm statute authorizes personal jurisdiction over defendants who engage in, among other things, the transaction of any business or the commission of a tortious act within the state, the Court’s inquiry focused on whether exercising personal jurisdiction over Zazzle comported with the due process clause. Because BASIC did not allege that Zazzle was subject to general personal jurisdiction in Missouri (i.e., BASIC did not allege that Zazzle was “essentially at home” in the forum state), the question instead turned on whether BASIC had sufficiently pled facts to support a claim of specific personal jurisdiction.

The Eighth Circuit explained that specific personal jurisdiction existed over Zazzle for the purposes of BASIC’s trademark infringement claims if Zazzle had certain minimum contacts with the forum state and BASIC’s claims arose out of or related to those contacts. For specific jurisdiction to apply, the underlying controversy must be connected to the defendant’s activities in the forum state; unconnected activities directed to the forum state, no matter how numerous or systematic, cannot convey specific personal jurisdiction. The Court used a five-factor test previously set forth in Whaley v. Esebag to conduct its analysis: “(1) the nature and quality of [defendant’s] contacts with the forum state; (2) the quantity of such contacts; (3) the relation of the cause of action to the contacts; (4) the interest of the forum state in providing a forum for its residents; and (5) convenience of the parties.”

The Eighth Circuit found that the behavior alleged by BASIC (Zazzle’s operation of a national website that sells and ships goods to Missouri combined with a single specific instance of an allegedly infringing t-shirt being sold and shipped to a Missouri consumer) was insufficient to support a specific jurisdiction claim. Zazzle’s website availability and sales unrelated to the use [...]

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Seeing Starz: No Damages Bar in Copyright Discovery Rule Case

The US Court of Appeal for the Ninth Circuit affirmed a district court’s denial of a motion to dismiss copyright infringement claims as barred by the statute of limitations, affirming the copyright owner’s right to sue even though more than three years had passed since the alleged infringement occurred. Starz Entertainment, LLC v. MGM Domestic Television Distribution, LLC, Case No. 21-55379 (9th Cir. July 14, 2022) (Wardlaw, Ikuta, Bade, JJ.)

Starz entered into licensing agreements for movies and television series episodes with MGM in 2013 and 2015. Under the agreements, MGM granted Starz the exclusive right to exhibit the movies and television series episodes for specified time periods. MGM agreed that it would not exhibit or license the content to any third parties during such specified time periods. From 2019 to 2020, Starz discovered that certain content it licensed from MGM was available on other streaming platforms.

Starz sued MGM in May 2020, asserting 340 claims of direct, contributory and vicarious copyright infringement, among other claims. MGM moved to dismiss, arguing that Starz’s copyright infringement claims were barred by the Supreme Court’s 2014 decision in Petrella v. MGM. MGM asserted that Petrella imposes a strict bar to collecting any damages for copyright infringement that occurs more than three years prior to the filing of the complaint. The district court determined that Petrella did not affect the discovery rule (i.e., that under the Copyright Act there exists a three-year damages bar) except when the plaintiff reasonably was not aware of the infringements at the time they occurred. MGM filed an interlocutory appeal.

The Copyright Act states: “No civil action shall be maintained under the provisions of this title unless it is commenced within three years after the claim accrued.” The issue on appeal here was when a copyright infringement claim accrues. The Ninth Circuit noted that it, and every other circuit, has an exception to the infringement rule, known as the “discovery rule,” which starts the clock when a copyright holder knows or reasonably should know that an infringement occurred. The Court disagreed with MGM that Petrella did away with the discovery rule. Instead, the discovery rule of accrual copyright claims is alive and well, and thus the Court affirmed the district court’s finding that Starz was not barred by Petrella from bringing a lawsuit.

The Ninth Circuit next addressed the issue of whether Petrella imposed a damages bar separate from the statute of limitations. MGM argued that Petrella created a separate damages bar that limits damages to damages arising from acts of infringement within the three-year window. The Court found that a three-year lookback period would eviscerate the discovery rule and explained that MGM’s approach is a textbook example of the absurdity of such a rule. The agreements between Starz and MGM covered hundreds of titles under separate time periods, and under MGM’s approach, damages could only be recovered for a 2013 infringement if the complaint was filed by 2016. In this case, Starz did not discover [...]

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Fee Award Appropriate for Trying to Refresh and Replay Case

The US Court of Appeals for the Federal Circuit upheld an attorneys’ fees award after the patent owner brought successive patent infringement suits attempting “to refile to wipe the slate clean” after the first court was poised to issue an adverse merits ruling. Realtime Adaptive Streaming, LLC v. Netflix, Inc., Netflix Streaming Services, Inc., Case Nos. 21-1484; -1485; -1518; -1519 (Fed. Cir. July 27, 2022) (Newman, Chen, JJ.) (Reyna, J., concurring-in-part, dissenting-in-part).

Realtime brought three patent infringement suits against Netflix alleging infringement of six different patents and the same accused products. Realtime first sued in Delaware, and Netflix moved to transfer to California for convenience (which Realtime vehemently opposed as an unfair burden) and to dismiss for failure to state a claim, arguing that four of the six patents were ineligible under 35 U.S.C. § 101 for being directed to an ineligible abstract idea. After briefing, the magistrate judge issued a report and recommendation finding the four patents ineligible under § 101. The court also denied the motion to transfer. Meanwhile, Netflix filed corresponding petitions for inter partes review (IPR) of the asserted patents, all of which were instituted by the Patent Trial & Appeal Board. Realtime moved to amend its complaint—for support pointing to five related patents that were subsequently found invalid under § 101 by the same judge—then voluntarily dismissed the Delaware action before the district court judge could rule on the magistrate judge’s report and recommendation.

The very next day, Realtime filed two new suits against Netflix in California asserting the same six patents, divvying up the four § 101-challenged patents as separate from the other two. Netflix moved to transfer both cases back to Delaware and moved for attorneys’ fees. Realtime opposed, this time arguing that California was more convenient than Delaware. However, before the California court could rule on the motion to dismiss, Realtime again voluntarily dismissed the California actions without prejudice.

Netflix renewed its motion for attorneys’ fees for the California actions, IPRs and related Delaware action. The district court awarded attorneys’ fees for the California actions under § 285 and, in the alternative, the court’s equitable powers. The district court declined to award attorneys’ fees for the related actions, IPRs or costs under Fed. R. Civ. P. 41(d). Realtime appealed the fee award, and Netflix cross-appealed the denial of fees for related proceedings.

The Federal Circuit affirmed, finding no abuse of discretion in awarding fees pursuant to equitable powers or in denying fees for related proceedings. Because the district court’s “inherent power to impose sanctions in the form of attorneys’ fees is not a substantive patent question,” the Federal Circuit considered the issue under the Ninth Circuit’s framework that “the court must find that the sanctioned behavior ‘constituted or was tantamount to bad faith.’” As for fees under § 285, “a district court ‘may award’ attorneys’ fees to ‘the prevailing party’ in ‘exceptional cases’”—an analysis unique to patent law and therefore governed by Federal Circuit precedent.

In affirming the award of fees, the [...]

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Purposeful Direction in a Forum Activates the Long Arm of the Law

The US Court of Appeals for the Ninth Circuit again vacated the US District Court for the Central District of California’s dismissal of a case for lack of personal jurisdiction, applying Fed. R. Civ. Proc. 4(k)(2) and concluding that the copyright infringement claims involving a foreign defendant were properly litigated in the United States. Lang Van, Inc. v. VNG Corporation, Case No. 19-56452 (9th Cir. Jul. 21, 2022) (Bybee, Bennett, JJ.; Bataillon, Distr. J., sitting by designation).

Lang Van, Inc. (LVI) is a California corporation that produces and distributes Vietnamese music and entertainment and owns copyrights to more than 12,600 songs and original programs. LVI sued VNG Corporation, a Vietnamese company that makes copyrighted music available for download worldwide through its Zing MP3 website and mobile applications. LVI served discovery requests on VNG, but instead of supplying substantive information or documents, VNG moved to dismiss for lack of personal jurisdiction. The district court granted the motion, and LVI appealed to the Ninth Circuit, which vacated and remanded the case to the district court with instructions that LVI be permitted to undertake jurisdictional discovery.

On remand, LVI took third-party discovery and argued that the evidence showed that VNG intentionally chose to release its applications in the United States; consented to jurisdiction, choice of law and venue in California; and allowed hundreds of thousands of iOS downloads and tens of thousands of Android downloads.

VNG filed a renewed motion to dismiss LVI’s (now amended) complaint, arguing a lack of personal jurisdiction, forum non conveniens (that there is another, more appropriate, forum) and failure to state a claim. The district court granted VNG’s motion after finding that there was no specific personal jurisdiction over VNG in California under the Ninth Circuit’s specific personal jurisdiction test. The district court did not address the second and third arguments (forum non conveniens and failure to state a claim) and did not address the issue of long-arm jurisdiction over VNG under Rule 4(k)(2). Again, LVI appealed.

The Ninth Circuit assessed jurisdiction under Rule 4(k)(2), which provides for jurisdiction over foreign defendants that have ample contacts within the United States as a whole, but whose contacts are so scattered among states that no single state would have jurisdiction. The test requires proof that (1) the claim at issue arises from federal law and (2) the defendant is not subject to any state’s courts of general jurisdiction, such that (3) invoking jurisdiction upholds due process, with the burden shifting to the defendant to show that application of jurisdiction under the third prong would be unreasonable.

The Ninth Circuit found that the first prong was met because the case involved claims of copyright infringement under federal law, and that the second prong was met because VNG asserted that it was not subject to the personal jurisdiction of any state court of general jurisdiction in the United States.

As for the third prong, the Ninth Circuit explained that when jurisdiction is challenged, the plaintiff must show (1) purposeful activities or transactions [...]

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