Xerox Corp. v. Monument Peak Ventures, LLC

XEROX CORPORATION, Plaintiff, v. MONUMENT PEAK VENTURES, LLC, Defendant.

Case # 20-CV-6263-FPG

UNITED STATES DISTRICT COURT WESTERN DISTRICT OF NEW YORK

August 18, 2020

DECISION AND ORDER

INTRODUCTION

Plaintiff Xerox Corporation ("Xerox") brings this declaratory judgment action, alleging that it has not infringed upon certain patents held by Defendant Monument Peak Ventures, LLC ("MPV"). ECF No. 1. Presently before the Court are two matters. First, MPV moves to dismiss the case for lack of personal jurisdiction under Federal Rule of Civil Procedure 12(b)(2). ECF No. 13. Xerox opposes the motion and requests jurisdictional discovery. ECF No. X. Second, Xerox moves to have attorneys Raghav Krishnapriyan and Catherine Y. Kim admitted to this Court pro hac vice, in order to appear in this action. ECF Nos. 25, 26. For the reasons that follow, the Court will permit limited jurisdictional discovery on specific personal jurisdiction, and Defendant's motion to dismiss is therefore DENIED WITHOUT PREJUDICE. Xerox's motions for pro hac vice admission are GRANTED.

BACKGROUND

The following facts are from the complaint, unless otherwise noted. Xerox is a corporation based in Rochester that designs and manufactures, inter alia, office printer devices. MPV is a limited liability company organized and based in Texas. Xerox alleges that MPV exists solely "to acquire and then assert patents against companies." ECF No. 1 at 1.

Starting in April 2019, MPV began contacting Xerox about eight patents it owns. Over the course of several months, MPV tried to "convince Xerox to license" its patents. Id. at 4. When that failed, MPV threatened litigation, asserting that some of Xerox's products infringed on the patents. Id. at 4-5. In response, Xerox filed the present action. ECF No. 1. It seeks a declaratory judgment that it has not infringed on any of MPV's eight patents.

DISCUSSION

The Court begins by addressing the motion to dismiss, before turning to the motions for pro hac vice admission.

I. Personal Jurisdiction

MPV moves to dismiss the case due to lack of personal jurisdiction. Xerox counters that this Court has personal jurisdiction over MPV and that, if there is any question as to that issue, jurisdictional discovery is warranted.

As will be discussed below, the Court agrees with MPV that, even looking at the record evidence and the complaint in the light most favorable to Xerox, Xerox has not made a sufficient showing that this Court has personal jurisdiction over MPV. However, the Court also concludes that Xerox has made a "sufficient start toward establishing personal jurisdiction" to justify limited jurisdictional discovery. McDonough v. Cycling Sports Grp., Inc., 392 F. Supp. 3d 320, 329 (W.D.N.Y. 2019). Therefore, the Court denies MPV's motion without prejudice to refiling upon the completion of such discovery.

"A defendant may move to dismiss for lack of personal jurisdiction pursuant to Federal Rule of Civil Procedure 12(b)(2)." JetBlue Airways Corp. v. Helferich Patent Licensing, LLC,960 F. Supp. 2d 383, 390 (E.D.N.Y. 2013). In a patent action such as this, "the existence of personal jurisdiction is, under Federal Circuit law, determined in accordance with the law of the Court of Appeals for the Federal Circuit." Id.; see also Arquest, Inc. v. Kimberly-Clark Worldwide, Inc., No. 07-CV-1202, 2008 WL 2971775, at *4 (S.D.N.Y. 2008). Where discovery has not been conducted, the plaintiff need only make a prima facie showing that the defendant is subject to personal jurisdiction. Avocent Huntsville Corp. v. Aten Int'l Co., Ltd., 552 F.3d 1324, 1329 (Fed. Cir. 2008). The Court must construe all pleadings, affidavits, and other written materials in the light most favorable to the plaintiff. See id.; Autogenomics, Inc. v. Oxford Gene Tech. Ltd., 566 F.3d 1012, 1017 (Fed. Cir. 2009).

"A court has personal jurisdiction over a nonresident defendant if the forum state's long-arm statute permits service of process and the assertion of personal jurisdiction comports with due process." New World Int'l, Inc. v. Ford Global Techs., LLC, 859 F.3d 1032, 1037 (Fed. Cir. 2017). Because the assertion of personal jurisdiction would not comport with due process under the present circumstances, the Court need not address whether New York's long-arm statute applies.¹

There are two categories of "personal jurisdiction under the Due Process Clause: specific and general." Dong Chul Kim v. Harte Hanks, Inc., 425 F. Supp. 3d 246, 255 (S.D.N.Y. 2019). "General jurisdiction, on one hand, requires that the defendant have 'continuous and systematic' contacts with the forum state and confers personal jurisdiction even when the cause of action has no relationship with those contacts." Oxford, 566 F.3d at 1017 (internal quotation marks omitted). "Specific jurisdiction, on the other hand, must be based on activities that arise out of or relate to the cause of action, and can exist even if the defendant's contacts are not continuous and systematic." Id. Xerox argues that personal jurisdiction is appropriate under both categories.

a. General Jurisdiction

A plaintiff bears a higher burden to establish general personal jurisdiction. "[W]here a plaintiff's claims do not arise out of or relate to the defendant's contacts with the forum State," a court must "explore the nature" of the defendant's contacts with the forum state "to determine whether they constitute . . . continuous and systematic general business contacts." Avocent, 552 F.3d at 1330. This is a difficult standard to meet. "[O]nly a limited set of affiliations with a forum will render a defendant amenable to all-purpose jurisdiction there." Daimler AG v. Bauman, 571 U.S. 117, 137 (2014). "For an individual, the paradigm forum for the exercise of general jurisdiction is the individual's domicile; for a corporation, it is an equivalent place, one in which the corporation is fairly regarded as at home"—usually, the place of incorporation and principal place of business. Id. (emphasis added). To be subject to general personal jurisdiction beyond those locations, the corporation must engage in activities that are so "substantial" and "of such a nature as to render the corporation at home in that State." In re Roman Catholic Diocese of Albany, N.Y., Inc., 745 F.3d 30, 39 (2d Cir. 2014) (emphasis omitted). Such situations are rare. See Chen v. Dunkin' Brands, Inc., 954 F.3d 492, 498 (2d Cir. 2020) (noting that it is only in a "truly exceptional case" that a corporate defendant will be treated as "at home" in forums other than "where it is incorporated or maintains its principal place of business").

Nevertheless, Xerox contends that the following business contacts suffice to establish general jurisdiction: (1) MPV "engaged in a year-long campaign of correspondence with Xerox that included [the exchange of documents] and threats to file suit"; (2) as part of that campaign, MPV communicated with Xerox by videoconference, by phone, and in writing; (3) MPV entered into licensing agreements for some of the disputed patents with other companies having ties to New York; (4) an MPV representative travelled to a business conference in New York on oneoccasion; (5) the patents at issue were once held by Kodak, a New York-based company; (6) MPV and an affiliated entity, Dominion Harbor Group ("Dominion"), filed a number of lawsuits pertaining to unrelated patents in New York;² (7) Dominion partnered with a New-York based company to license other patents in its portfolio; and (8) in 2016, Dominion and Xerox entered into a nondisclosure agreement concerning unrelated patents.

Simply put, these allegations do not constitute a prima facie showing of general jurisdiction. Xerox does not appear to dispute that MPV and Dominion are incorporated and based in Texas. See ECF No. 1 at 3; ECF No. 24 at 16. Under Daimler, state of incorporation and of principal place of business are the two "paradigm" affiliations with a state that will "render a defendant amenable to all-purpose jurisdiction," Daimler, 571 U.S. at 137, and neither applies here.

While a foreign business's activities in the forum state may nonetheless be so substantial and continuous as to render it "at home" in that state, MPV and Dominion's activities fall far short of that standard. The fact that MPV and Dominion have done business with numerous companies based in or having ties to New York is insufficient. See, e.g., Daimler, 571 U.S. at 139 (noting that it is not enough that "a foreign corporation's in-forum contacts can be said to be in some sense 'continuous and systematic'"); Chen, 954 F.3d at 500 (fact that franchisor had "numerous retail establishments in New York" was insufficient to establish general jurisdiction); Kane v. Island Vibes Tours, No. 17-CV-506, 2018 WL 502614, at *2 (E.D.N.Y. Jan. 19, 2018) ("[W]hether [the defendant] does business [in New York], even if it does business here with regularity, is no longer enough [since Daimler]."). Likewise, the fact that MPV and Dominion have made use of NewYork's court system is insufficient. See, e.g., Al Haj v. Pfizer Inc., 338 F. Supp. 3d 741, 750-51 (N.D. Ill. 2018) (collecting cases).

The cases Xerox cites are distinguishable because they predate the Supreme Court's decision in Daimler. See ECF No. 24 at 12-13. Under Daimler, a foreign business's activities in the forum state must be so "significant or exceptional" in relation to its overall business that the forum state is akin to the state of incorporation or its business headquarters. See, e.g., Perkins v. Benguet Consolidated Mining Co., 342 U.S. 437 (1952) (Philippine mining corporation subject to general jurisdiction in Ohio where it had ceased all mining activities abroad and all business was conducted through Ohio office). Neither Xerox's allegations nor the record evidence come close to that standard.

Xerox has not met its burden of showing that MPV is subject to general personal jurisdiction in New York.

b. Specific Jurisdiction

The Court turns...