Trs. of Purdue Univ. v. STMicroelectronics N.V.

TRUSTEES OF PURDUE UNIVERSITY, Plaintiff, v. STMICROELECTRONICS N.V., STMICROELECTRONICS INTERNATIONAL N.V., and STMICROELECTRONICS, INC., Defendants.

No. 6:21-cv-727-ADA

United States District Court, W.D. Texas, Waco Division

April 27, 2022

MEMORANDUM OPINION & ORDER DENYING DEFENDANT STMICROELECTRONICS N.V.'S MOTION TO DISMISS FOR LACK OF PERSONAL JURISDICTION [ECF No. 38]

ALAN D ALBRIGHT UNITED STATES DISTRICT JUDGE

Came on for consideration this date is Defendant STMicroelectronics N.V.'s (“STNV”) Motion to Dismiss for Lack of Personal Jurisdiction, filed November 8, 2021. ECF No. 38 (the “Motion”). Plaintiff Trustees of Purdue University (“Purdue”) filed an opposition on November 22, 2021, ECF No. 47, to which STNV replied on December 3, 2021, ECF No. 50. After careful consideration of the Motion, the Parties' briefs, and the applicable law the Court DENIES STNV's Motion without prejudice.

I. BACKGROUND

Purdue initiated this Action on July 14, 2021, suing STNV and STMicroelectronics Inc. (“ST-INC”) for infringing U.S. Patent Nos. 7, 498, 633 (the “'633 patent”) and 8, 035, 112 (the “'112 patent”) (collectively, the “Asserted Patents”). See generally ECF No. 1. The Asserted Patents relate generally to semiconductor devices for high-voltage power applications and self-aligned source contacts for field-effect transistors, respectively. See id. ¶¶ 20, 30. Purdue is specifically accusing the following SiC power MOSFETs of infringing the Asserted Patents: SCT1000N170AG, SCT20N170AG, SCTWA35N65G2VAG SCTH100N65G2-7AG,

SCTH35N65G2V-7, SCTH35N65G2V-7AG, SCTH90N65G2V-7, SCTW100N65G2AG, SCTW35N65G2V, SCTW35N65G2VAG, SCTW90N65G2V, SCTWA35N65G2V, and SCTWA90N65G2V. ECF No. 27 ¶ 91.

On October 11, 2021, STNV filed a motion to dismiss for lack of personal jurisdiction. See ECF No. 22. ST-INC did not seek dismissal. Purdue filed an amended complaint on October 25, 2021, further accusing STMicroelectronics International N.V. (“ST-INTL”) of infringement and adding allegations directed to the Defendants' contacts with the United States and Texas. See ECF No. 27 (the “FAC”). The FAC alleges that STNV is organized under the laws of the Netherlands and locates its head offices there. Id. ¶¶ 9-10; see also ECF No. 38 at 1.

On November 8, 2021, STNV, in view of the FAC, renewed its motion to dismiss for lack of personal jurisdiction. See ECF No. 38. STNV's co-defendants, ST-INC and ST-INTL, did not join STNV's Motion.^[1] Purdue opposes but requests that, if jurisdiction is found lacking, the Court permit Purdue limited jurisdictional discovery. See ECF No. 47 at 14-15. STNV's Motion is now ripe for judgment.

II. LEGAL STANDARD

A. Personal Jurisdiction Generally

Federal Rule of Civil Procedure 12(b)(2) requires a court to dismiss a claim if the court does not have personal jurisdiction over the defendant. The plaintiff has the burden of establishing jurisdiction. Patterson v. Aker Sols. Inc., 826 F.3d 231, 233 (5th Cir. 2016). When a court assesses a non-resident defendant's challenge to personal jurisdiction without holding an evidentiary hearing, the plaintiff bears the burden of presenting “sufficient facts” for a prima facie case of personal jurisdiction. Thiam v. T-Mobile USA, Inc., No. 4:19-CV-00633, 2021 WL 1550814, at *1 (E.D. Tex. Apr. 20, 2021); Celgard, LLC v. SK Innovation Co., Ltd., 792 F.3d 1373, 1378 (Fed. Cir. 2015). The court accepts as true allegations in the plaintiff's complaint, except when they are contradicted by the defendant's affidavits. Thiam, 2021 WL 1550814, at *1. However, “genuine, material conflicts” between the facts in the parties' affidavits and other evidence are construed in the plaintiff's favor. Id.

In matters unique to patent law, Federal Circuit law-rather than the law of the regional circuit-applies. See In re Cray, 871 F.3d 1355, 1360 (Fed. Cir. 2017) (citing Midwest Indus., Inc. v. Karavan Trailers, Inc., 175 F.3d 1356, 1359 (Fed. Cir. 1999)). Whether this Court has personal jurisdiction is just such an issue, so Federal Circuit law governs the substantive questions of law. Autogenomics, Inc. v. Oxford Gene Tech. Ltd., 566 F.3d 1012, 1016 (Fed. Cir. 2009).

Establishing in personam jurisdiction in a federal question case is a two-step inquiry (at least when the implicated federal statute does not provide for service of process). First, a court asks whether a defendant is subject to the jurisdiction of a state court of general jurisdiction under state law. Fed. Rule Civ. Proc. 4(k)(1)(A). This requires measuring the reach of the long-arm statute of the state in which the federal court sits. See Daimler AG v. Bauman, 571 U.S. 117, 125 (2014). Second, the court asks if the exercise of personal jurisdiction would exceed the limitations of due process. See id. Since the Texas long-arm statute extends to the limits of due process, see BMC Software Belg., N.V. v. Marchand, 83 S.W.3d 789, 795 (Tex. 2002), the Court need only focus on the due process aspects of the personal jurisdiction question, see Jackson v. Tanfoglio Giuseppe S.R.L., 615 F.3d 579, 584 (5th Cir. 2010).

The constitutional inquiry requires the court to consider (1) whether a defendant has purposefully availed itself of the protections and benefits of the forum state by establishing “minimum contacts” with the state, and (2) whether the exercise of jurisdiction comports with traditional notions of “fair play and substantial justice.” Tanfoglio, 615 F.3d at 584. Minimum contacts are satisfied by contacts creating either general or specific jurisdiction. Thiam, 2021 WL 1550814, at *2 (citing Wilson v. Belin, 20 F.3d 644, 647 (5th Cir. 1994)).

A corporation is only subject to general jurisdiction when its contacts with the state are so “continuous and systematic” they render it “essentially at home” in the forum state. Daimler AG, 571 U.S. at 138-39. Ordinarily, a corporation is only subject to general jurisdiction where it is incorporated or has its principal place of business. Daimler AG, 571 U.S. at 137, 139 n.19.

“The Federal Circuit applies a three-prong test to determine if specific jurisdiction exists: (1) whether the defendant purposefully directed activities at residents of the forum; (2) whether the claim arises out of or relates to those activities; and (3) whether assertion of personal jurisdiction is reasonable and fair.” Nuance Commc'ns, Inc. v. Abbyy Software House, 626 F.3d 1222, 1231 (Fed. Cir. 2010). The plaintiff has the burden to show minimum contacts exist under the first two prongs, but the defendant has the burden of proving the exercise of jurisdiction would be unreasonable under the third. Elecs. For Imaging Inc. v. Coyle, 340 F.3d 1344, 1350 (Fed. Cir. 2003). The Federal Circuit has counseled, however, that the exercise of jurisdiction is unreasonable only in “the rare situation in which the plaintiff's interest and the state's interest in adjudicating the dispute in the forum are so attenuated that they are clearly outweighed by the burden of subjecting the defendant to litigation within the forum.” Beverly Hills Fan Co. v. Royal Sovereign Corp., 21 F.3d 1558, 1568 (Fed. Cir. 1994) (citing Burger King Corp. v. Rudzewicz, 471 U.S. 462, 477, 105 S.Ct. 2174 (1985)).

The test of reasonableness and fairness is “a multi-factored balancing test that weighs any burdens on the defendant against various countervailing considerations, including the plaintiff's interest in a convenient forum and the forum state's interest in resolving controversies flowing from in-state events.” Viam Corp. v. Iowa Export-Import Trading Co., 84 F.3d 424, 429 (Fed. Cir. 1996) (citing Burger King, 471 U.S. at 477). This test requires balancing the following factors: “(1) the burden on the defendant; (2) the interests of the forum state; (3) the plaintiff's interest in obtaining relief; (4) the interstate judicial system's interest in obtaining the most efficient resolution of controversies; and (5) the interest of the states in furthering their social policies.” Viam Corp., 84 F.3d at 429.

III. ANALYSIS

STNV argues that it should be dismissed from this Action because it is not incorporated here nor does it “manufacture, market, distribute, offer to sell, sell, import, export, transport, or service products or services in or to Texas or anywhere else in the United States.” ECF No. 38 at 1. STNV continues that it “has no offices, facilities, bank accounts, employees, or real estate in Texas or anywhere else in the United States.” Id. Nor does it “publish, own, or operate any website.” Id. Furthermore, STNV avers that it is “not registered to conduct business in Texas, and it has no registered agent for service of process in Texas.” Id. According to STNV, the allegations in the FAC purporting to establish this Court's jurisdiction over STNV “merely conflate STNV with [ST-INC].” Id. at 1-2.

In opposing the Motion, Purdue does not allege that this Court has general personal jurisdiction over STNV. ECF No. 47 at 5 n.1. Rather, Purdue supposes that jurisdiction lays under: (1) a stream-of-commerce theory; (2) an agency theory; and/or (3) Federal Rule of Civil Procedure 4(k)(2).

A. Stream-of-Commerce

The stream-of-commerce doctrine “recognizes that a defendant may purposefully avail itself of the protection of a state's laws-and thereby [] subject itself to personal jurisdiction-by sending its goods rather than its agents into the forum.” In re Depuy Orthopaedics, Inc. 888 F.3d 753, 753 (Fed. Cir. 2018). The existence of an “established distribution channel into the forum” is a “significant factor” when evaluating the strength of a non-movant's stream-of-commerce theory. See Beverly Hills Fan, 21 F.3d at 1565 n.15. The Supreme Court has, however, introduced a split of authority as to what is required to establish minimum...