Case 8:19-cv-01246-PSG-AS Document 45 Filed 10/30/19 Page 1 of 7 Page ID #:507

UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA

CIVIL MINUTES - GENERAL

JS-6
Case No. SACV 19-1246 PSG (ASx) Date October 30, 2019
Title Etekcity Corporation v. Devine LEDS Limited

Present: The Honorable Philip S. Gutierrez, United States District Judge

Wendy Hernandez Not Reported
Deputy Clerk Court Reporter
Attorneys Present for Plaintiff(s): Attorneys Present for Defendant(s):
Not Present Not Present
Proceedings (In Chambers): Order GRANTING Defendant’s motion to dismiss and
DENYING Plaintiff’s request for jurisdictional discovery.

Before the Court is a motion to dismiss filed by Defendant Devine LEDS Ltd.
(“Defendant”). See Dkt. # 39 (“Mot.”). Plaintiff Etekcity Corp. (“Plaintiff”) opposes the
motion, see Dkt. # 43 (“Opp.”), and Defendant timely replied, see Dkt. # 44 (“Reply”). The
Court finds the matter appropriate for decision without oral argument. See Fed. R. Civ. P. 78;
L.R. 7-15. Having considered the moving papers, the Court GRANTS Defendant’s motion and
DENIES Plaintiff’s request for jurisdictional discovery.

I. Background

Plaintiff, an Iowa corporation with its principal place of business in California, and
Defendant, allegedly a Chinese company based in Hong Kong, both manufacture similar
camping lanterns. See Complaint, Dkt. # 1 (“Compl.”), ¶¶ 8–9. Plaintiff sells its lanterns on
Amazon.com. See id. ¶ 17. On April 13, 2019, Defendant sent a “notice of patent infringement”
to Amazon, asserting that Plaintiff’s lanterns infringed its patent. Id. ¶ 16. According to
Plaintiff, as a result of this notice, “Amazon’s system automatically delisted [its] lantern,
resulting in an immediate loss of revenue and the risk that [its] entire product line could get
removed from Amazon.com.” Id. ¶ 17.

Plaintiff contends that it has not infringed Defendant’s patent and that it was selling its
lanterns for more than a year before Defendant filed its patent application. Id. ¶ 18. It informed
both Defendant and Amazon of this fact, but Defendant refused to withdraw its notice of
infringement and Amazon has not responded to Plaintiff’s correspondence. See id. ¶¶ 18–19.

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 Case 8:19-cv-01246-PSG-AS Document 45 Filed 10/30/19 Page 2 of 7 Page ID #:508

UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA

CIVIL MINUTES - GENERAL

Case No. SACV 19-1246 PSG (ASx) Date October 30, 2019
Title Etekcity Corporation v. Devine LEDS Limited

On June 22, 2019, Plaintiff filed suit against Defendant in this Court. See generally id.
Plaintiff asserted claims against Defendant for inequitable conduct, intentional interference with
prospective economic advantage, and a declaratory action for patent invalidity. See id. ¶¶ 20–38.
On June 24, 2019, Plaintiff moved for a temporary restraining order requiring Defendant to
withdraw its notice of infringement to Amazon for fourteen days, which the Court denied. See
Dkt. # 21. On July 16, 2019, after Plaintiff filed a motion for a preliminary injunction that
would have required Defendant to withdraw its notice of infringement, Defendant withdrew its
notice of infringement. See Dkts. # 33, # 34.

Defendant now moves to dismiss the action for lack of personal jurisdiction. See
generally Mot. Plaintiff opposes, and in the alternative requests jurisdictional discovery on
Defendant’s sales. See generally Opp.

II. Legal Standard

Federal Rule 12(b)(2) provides that a defendant may move to dismiss an action for lack of
personal jurisdiction. Fed. R. Civ. P. 12(b)(2). In exercising personal jurisdiction over
nonresident defendants, California courts need only consider federal due process requirements
because California’s jurisdictional statute is coextensive with federal law. See Cal. Civ. Proc.
Code § 410.10; Autogenomics, Inc. v. Oxford Gene Tech. Ltd., 566 F.3d 1012, 1017 (Fed. Cir.
2009); Schwarzenegger v. Fred Martin Motor Co., 374 F.3d 797, 800–01 (9th Cir. 2004); Data
Disc, Inc. v. Systems Tech. Assocs., Inc., 557 F.2d 1280, 1286 (9th Cir. 1977). Due process
requires that nonresident defendants possess “certain minimum contacts with [the forum state]
such that [maintaining] the suit does not offend traditional notions of fair play and substantial
justice.” International Shoe Co. v. Washington, 326 U.S. 310, 316 (1945) (internal citations and
quotation marks omitted). Depending on the extent of the defendant’s contacts, the forum state
may exercise either general or specific personal jurisdiction. See Daimler AG v. Bauman, 571
U.S. 117, 126–27 (2014).

Where, as here, the motion to dismiss is based on pleadings and affidavits, and not an
evidentiary hearing, the plaintiff need only make a prima facie showing of jurisdictional facts.
See Avocent Huntsville Corp. v. Aten Int’l Co., 552 F.3d 1324, 1329 (Fed. Cir. 2008). Once a
defendant challenges personal jurisdiction, the plaintiff bears the burden of demonstrating that
jurisdiction is appropriate. See Boschetto v. Hansing, 539 F.3d 1011, 1015 (9th Cir. 2008); see,
e.g., Avocent, 552 F.3d at 1329.

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UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA

CIVIL MINUTES - GENERAL

Case No. SACV 19-1246 PSG (ASx) Date October 30, 2019
Title Etekcity Corporation v. Devine LEDS Limited

III. Discussion

The central issue in this case is whether this Court has specific personal jurisdiction over
Plaintiff’s claims for non-infringement, tortious interference, and inequitable conduct.1 “The
issue of personal jurisdiction in a declaratory action for non-infringement is ‘intimately related to
patent law’ and thus governed by Federal Circuit law regarding due process.” Breckenridge
Pharm., Inc. v. Metabolite Labs., Inc., 444 F.3d 1356, 1361 (Fed. Cir. 2006) (quoting Silent
Drive, Inc. v. Strong Indus., Inc., 326 F.3d 1194, 1201 (Fed. Cir. 2003)).

To determine whether a court may exercise specific jurisdiction over a defendant, the
Federal Circuit has prescribed a three-part test in which a court must determine whether:

(1) the defendant purposefully directed its activities at residents of the forum, (2) the
claim arises out of or relates to those activities, and (3) assertion of personal jurisdiction
is reasonable and fair.

Breckenridge, 444 F.3d at 1363 (internal citation and quotation marks omitted). The plaintiff
bears the burden of establishing the first two prongs, which comprise the “minimum contacts”
inquiry. See id.; Maxchief Invs. Ltd. v. Wok & Pan, Ind., Inc., 909 F.3d 1134, 1138 (Fed. Cir.
2018). If the plaintiff fails to satisfy either of the first two prongs, then personal jurisdiction is
not established in the forum state. See Breckenridge, 444 F.3d at 1363. If the plaintiff succeeds
on the first two prongs, then the defendant must present a compelling case as to why exercising
jurisdiction would be unreasonable. See id. (citing Burger King Corp. v. Rudzewicz, 471 U.S.
462, 476–77 (1985)).

The Federal Circuit holds that for a plaintiff to demonstrate enough minimum contacts to
confer personal jurisdiction over a non-infringement claim, the plaintiff must show that the
“contacts ‘relate in some material way to the enforcement or the defense of the patent.’” See
Maxchief, 909 F.3d at 1138 (quoting Avocent, 552 F.3d at 1336). “Accordingly, in this context

1
In its opposition, Plaintiff does not respond to Defendant’s argument that this Court lacks
general jurisdiction over Defendant. See generally Opp.; see Reply 2:26–28. Arguments to
which no response is supplied are deemed conceded. See, e.g., Tapia v. Wells Fargo Bank, N.A.,
No. CV 15-03922 DDP (AJWX), 2015 WL 4650066, at *2 (C.D. Cal. Aug. 4, 2015); Silva v.
U.S. Bancorp, No. 5:10-cv-01854-JHN-PJWx, 2011 WL 7096576, at *3 (C.D. Cal. Oct. 6,
2011). As such, the Court construes Plaintiff’s silence as a concession that the Court lacks
general jurisdiction over Defendant.

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UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA

CIVIL MINUTES - GENERAL

Case No. SACV 19-1246 PSG (ASx) Date October 30, 2019
Title Etekcity Corporation v. Devine LEDS Limited

the minimum contacts prong requires some enforcement activity in the forum state by the
patentee.” Id. For example, the Federal Circuit has found minimum contacts in a non-
infringement case when a patentee sent infringement notice letters to an entity doing business in
the forum state and traveled there to discuss the alleged infringement, see Xilinx, Inc. v. Papst
Licensing GmbH & Co. KG, 848 F.3d 1346, 1352 (Fed. Cir. 2017), and when the patentee
entered into an exclusive licensing agreement with an entity in the forum that permitted the
licensee to litigate infringement claims against third party infringers of the licensed
patents, see Breckenridge, 444 F.3d at 1366. By contrast, a plaintiff fails to demonstrate
minimum contacts when the defendant merely initiates lawsuits in different forums, sends a
plaintiff infringement notice letters, or sells products that utilize the patented technology within
the forum. See Maxchief, 909 F.3d at 1139–40; Avocent, 552 F.3d at 1336.

Plaintiff argues that three of Defendant’s activities satisfy minimum contacts: the
infringement notice that Defendant sent to Amazon, Defendant’s alleged communications with
Plaintiff after Defendant sent the infringement notice, and Defendant’s alleged sales within the
forum. See Opp. 4:22–28. The Court assesses each activity in turn. Because the Court finds
that Plaintiff has not demonstrated that Defendant has minimum contacts with California, it does
not analyze the third prong, whether exercising personal jurisdiction would be reasonable and
fair.

A. Infringement Notice

Plaintiff argues that Defendant established minimum contacts with California when it sent
an infringement notice to Amazon that caused Amazon to take down Plaintiff’s products. See
id.. 8:20–9:2. Because Plaintiff is in California, Defendant reached into the state when it
employed these “extra-judicial patent enforcement” measures and thus created minimum
contacts that confer jurisdiction. See id. 8:25–28. Defendant, relying on Avocent, argues that
infringement letters, without more, are not enough to create minimum contacts. See Mot.
4:20–6:1. Further, even if an infringement letter sufficed under Federal Circuit law, Plaintiff
sent the letter to Amazon, located in Seattle, Washington, rather than to Plaintiff in California,
which would make the letter a contact with Washington. See Reply 7:7–12.

The infringement notice is insufficient to create minimum contacts with California. The
Federal Circuit has repeatedly held that infringement notices, without more, are not enough to
create minimum contacts with a forum. See Avocent, 552 F.3d at 1333; Red Wing Shoe Co. v.
Hockerson-Halberstadt, Inc., 148 F.3d 1355, 1361 (Fed. Cir. 1998). Plaintiff fails to
demonstrate any “other activities” such as “extra-judicial patent enforcement within the forum”

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UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA

CIVIL MINUTES - GENERAL

Case No. SACV 19-1246 PSG (ASx) Date October 30, 2019
Title Etekcity Corporation v. Devine LEDS Limited

that would create contacts with California given that Defendant sent the notice to Washington.
See Avocent, 552 F.3d at 1334 (emphasis added). While Plaintiff characterizes the takedown of
its California-based products as extra-judicial enforcement in California, this is mistaken. See
Opp. 8:25–28. Just as in Avocent, where the court held that a defendant’s infringement letter to
Amazon related to an Alabama-based plaintiff did not create minimum contacts with Alabama,
Defendant’s letter to Amazon does not create California contacts in this case. See Avocent, 552
F.3d at 1334 n.3.

To argue that infringement letters alone can establish minimum contacts, Plaintiff relies
on Jack Henry & Assocs. v. Plano Encryption Techs. LLC, 910 F.3d 1199, 1204 (Fed Cir. 2018).
See Opp. 8:20–25. However, this case is distinguishable. In Jack Henry, the defendant
acknowledged that it sent several letters to the plaintiffs in the proposed forum and thus
conceded the minimum contacts inquiry. See Jack Henry, 910 F.3d at 1204. By contrast,
Defendant did not send a letter to Plaintiff, but instead to Amazon, which is located outside
California. See Opp. 6:10–14. Ultimately, because Plaintiff cannot show forum contacts like the
plaintiff in Jack Henry, Plaintiff fails to satisfy this prong.

B. Sales

Next, Plaintiff argues that Defendant is subject to personal jurisdiction in this Court
because Defendant sells its product in California through Amazon. See id. 7:19–22. To
substantiate this argument, Plaintiff attaches Amazon reviews of Defendant’s product from
California customers. See id., Ex. B; see also Declaration of Rachael D. Lamkin, Dkt. # 43-1
(“Lamkin Decl.”), ¶ 8. Defendant responds that Plaintiff has not provided admissible evidence
of sales. See Reply 2:22–23. However, even if Plaintiff provided admissible evidence of sales,
sales are irrelevant to assessing personal jurisdiction in the context of a non-infringement action
under Federal Circuit precedent. See id. 3:20–22 (citing Avocent, 552 F.3d at 1335–36).

The Court agrees with Defendant that, even assuming Plaintiff provided admissible
evidence of sales, this evidence does not create minimum contacts. See id. In Avocent, the
Federal Circuit held that in a non-infringement action, “sales do not constitute such other
activities as will support a claim of specific personal jurisdiction over a defendant patentee.”
Avocent, 552 F.3d at 1336 (internal quotation marks omitted). Sales are inconsequential to
whether courts have jurisdiction in these cases because “[w]hat the patentee makes, uses, offers
to sell, sells, or imports is of no real relevance to the enforcement or defense of a patent, because
‘the federal patent laws do not create any affirmative right to make, use, or sell anything.’” Id. at
1335 (quoting Leatherman Tool Group Inc. v. Cooper Indus., Inc., 131 F.3d 1011, 1015 (Fed.

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UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA

CIVIL MINUTES - GENERAL

Case No. SACV 19-1246 PSG (ASx) Date October 30, 2019
Title Etekcity Corporation v. Devine LEDS Limited

Cir. 1997)). As Plaintiff itself admits, whether Defendant sold anything in California has no
bearing on a non-infringement claim. See Opp. 7:26–28.

Plaintiff argues that the Court can exercise specific personal jurisdiction based on
Defendant’s sales because it brings a claim for intentional interference with prospective
economic advantage along with its non-infringement claim. See id. Plaintiff is mistaken. As
explained above, the only conduct that Plaintiff alleges Defendant purposefully directed, the
infringement letter, was directed toward Washington, not California. See id. 8:20–9:2.
Moreover, Plaintiff cites no exception to the general rule from Avocent that sales cannot create
minimum contacts in a declaratory non-infringement action. See Avocent, 552 F.3d at 1336; cf.
Maxchief, 909 F.3d at 1138 n.2 (holding that even when a plaintiff brought a tortious
interference claim “[s]hipments and sales of patented products by the patent holder are not
enforcement activities, and thus do not qualify as relevant minimum contacts.”). Therefore, the
Court cannot exercise specific personal jurisdiction on this basis.2

C. Alleged Communications

Finally, in its opposition, Plaintiff vaguely references pre-suit communications with

Defendant, including licensing efforts where Defendant allegedly offered Plaintiff a license to
the patent at-issue. Opp. 7:12–18. Plaintiff does not plead these communications in the
complaint and provides no evidence of these communications in its motion. See generally
Compl.; Opp. But, even taking these allegations as true, Plaintiff fails to demonstrate that mere
licensing discussions can create minimum contacts on a non-infringement claim. See Radio Sys.
Corp. v. Accession, Inc., 638 F.3d 785, 790–91 (Fed. Cir. 2011) (holding that a defendant’s
attempts to interest a plaintiff in a business transaction, which included patent licensing
negotiations, were not “enforcement or defense efforts” sufficient to create minimum contacts).
Accordingly, Plaintiff cannot carry its burden of demonstrating minimum contacts with its bare
references to licensing negotiations.

2
The Court also DENIES Plaintiff’s request for jurisdictional discovery on Defendant’s sales.
Opp. 13:18–14:9. Because sales do not qualify as relevant minimum contacts in a non-
infringement action “it is clear that further discovery would not demonstrate facts sufficient to
constitute a basis for jurisdiction.” Laub v. U.S. Dep’t of Interior, 342 F.3d 1080, 1093 (9th Cir.
2003) (quotation marks omitted).

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UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA

CIVIL MINUTES - GENERAL

Case No. SACV 19-1246 PSG (ASx) Date October 30, 2019
Title Etekcity Corporation v. Devine LEDS Limited

IV. Conclusion

Because the Court concludes that it has neither general nor specific jurisdiction over
Defendant, and thus cannot assert personal jurisdiction over it, it GRANTS Defendant’s motion
to dismiss. The Court also DENIES Plaintiff’s request for jurisdictional discovery.

This order closes the case.

IT IS SO ORDERED.

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