Yahoo!, Inc. v. MyMail, Ltd.

Filing 49

ORDER by Judge Davila denying without prejudice 20 Motion to Dismiss for Lack of Jurisdiction; denying without prejudice 32 Motion to Dismiss. (ejdlc3, COURT STAFF) (Filed on 7/11/2017)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN JOSE DIVISION

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YAHOO!, INC.,

Case No. 5:16-cv-07044-EJD

Plaintiff,
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ORDER DENYING WITHOUT
PREJUDICE DEFENDANT’S MOTION
TO DISMISS, STAY OR TRANSFER
AND DEFENDANT’S MOTION TO
DISMISS FOR LACK OF PERSONAL
JURISDICTION AND IMPROPER
VENUE

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DOCKET NOS. 20, 32

v.
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MYMAIL, LTD.,

United States District Court
Northern District of California

Defendant.

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The following motions are scheduled for hearing on July 13, 2017: Defendant’s Motion to

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Dismiss for Lack of Personal Jurisdiction and Improper Venue and Defendant’s Motion to

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Dismiss, Stay or Transfer. The Court finds it appropriate to take the motions under submission for

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decision without oral argument pursuant to Civil Local Rule 7-1(b). Having considered the

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motion, opposition and reply briefs, and for the reasons set forth below, the Court denies

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Defendant’s motions without prejudice.

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The parties are involved in two separate lawsuits. The first filed action is a patent

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infringement suit initiated in 2016 by MyMail, Ltd. (“MyMail”) against Yahoo!, Inc. (“Yahoo”) in

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the Eastern District of Texas, Civil Action No. 2:16-cv-01000-JRG-RSP (“Texas Action”). In the

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Texas Action, MyMail alleges, among other things, that Yahoo’s testing and implementation of

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the Yahoo Toolbar infringes two of MyMail’s patents.

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Yahoo initiated the second action in this Court against MyMail for breach of Yahoo’s

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Toolbar Software License and Yahoo’s Terms of Service (“Yahoo Agreements”), both of which

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Case No.: 5:16-cv-07044-EJD
ORDER DENYING WITHOUT PREJUDICE DEFENDANT’S MOTION TO DISMISS, STAY
OR TRANSFER AND DEFENDANT’S MOTION TO DISMISS FOR LACK OF PERSONAL
JURISDICTION AND IMPROPER VENUE

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contain a forum selection clause specifying jurisdiction exclusively in the courts located within the

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County of Santa Clara, California. Complaint, ¶¶19, 24. In the instant action, Yahoo alleges,

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among other things, that MyMail breached one or both of the Yahoo Agreements and its duty of

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good faith and fair dealing by engaging in the following acts: bringing the Texas Action outside

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the courts of the County of Santa Clara; reverse engineering one or more versions of the Yahoo

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Toolbar and using the Yahoo Toolbar in a manner inconsistent with the Yahoo Agreements;

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seeking to derive income from use of Yahoo software; and copying Yahoo software and data

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obtained through Yahoo software and by transferring or transmitting data obtained through Yahoo

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software in the MyMail Complaint and First Amended Complaint filed in the Texas Action.

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MyMail moves to dismiss this action for lack of personal jurisdiction and improper venue.

United States District Court
Northern District of California

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According to MyMail, Yahoo’s sole basis for asserting that this Court has jurisdiction over

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MyMail and that venue is proper are the forum selection clauses found in the Yahoo Agreements.

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MyMail contends that it did not enter into the Yahoo Agreements, nor did it authorize, instruct or

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direct anyone to enter into the Yahoo Agreements on its behalf; that the Yahoo Agreements are

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“browsewrap agreements” that do not reasonably communicate the terms of those Agreements to

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any user opening a Yahoo e-mail account and downloading the Toolbar; and that MyMail’s patent

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infringement claims do not fall within the scope of the Yahoo Agreements. MyMail also moves to

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dismiss, stay or transfer the action pursuant to the first-to-file rule.

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On March 17, 2017, Magistrate Judge Roy S. Payne issued an order in the Texas Action

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denying Yahoo’s motion to change venue.1 In doing so, Judge Payne rejected Yahoo’s argument

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that MyMail’s patent infringement claims fall within the scope of the forum selection clauses.

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Judge Payne also found that Yahoo had failed to furnish reliable evidence that someone with

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authority to bind MyMail agreed to the terms of the Yahoo Agreements. See MyMail’s Motion to

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Dismiss, Stay or Transfer. Yahoo has filed objections to the Judge’s Order and My Mail has filed

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Pursuant to Rule 201 of the Federal Rules of Civil Procedure, the Court takes judicial
notice of the Order. See Exhibit G attached to Buether Decl. in Support of Motion to Dismiss,
Stay or Transfer.
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a response to those objections. Because the applicability of the forum selection clauses in the

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Yahoo Agreements is central to the pending motions in this Court and remains the subject of

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motion practice in the Texas Action, the Court DENIES Defendant’s Motion to Dismiss, Stay or

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Transfer and Defendant’s Motion to Dismiss for Lack of Personal Jurisdiction without prejudice to

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Defendant’s right to renew the motions, if appropriate, after the Eastern District of Texas rules on

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Yahoo’s pending objection.

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United States District Court
Northern District of California

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IT IS SO ORDERED.
Dated: July 11, 2017
______________________________________
EDWARD J. DAVILA
United States District Judge

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