Skyworks Solutions, Inc. v. Kinetic Technologies, Inc. et al

Filing 80

Judge George A. OToole, Jr: OPINION AND ORDER entered granting 51 Motion to Dismiss; denying 73 Motion for Leave to File First Amended Complaint ; denying 76 Motion for Leave to File Sur-Reply (Danieli, Chris)

UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS
CIVIL ACTION NO. 13-10655-GAO
SKYWORKS SOLUTIONS, INC.,
Plaintiff,
v.
KINETIC TECHNOLOGIES HK LIMITED,
Defendant.
OPINION AND ORDER
February 4, 2015
O’TOOLE, D.J.
I.

Background
This case arises out of a patent dispute involving light-emitting diode (“LED”) driver

technology. Skyworks Solutions, Inc. alleges that the defendants have infringed its rights under
U.S. Patent No. 7,921,320 (“the ’320 patent”), entitled “Single Wire Interface,” relating to
technology for LED drivers used in consumer electronics such as cell phones.
Defendant Kinetic Technologies HK Limited (“Kinetic HK”), a company based in Hong
Kong, has moved to dismiss for lack of personal jurisdiction pursuant to Federal Rule of Civil
Procedure 12(b)(2). The other defendant, Kinetic Technologies, Inc. (“Kinetic U.S.”), a
California corporation, was previously dismissed from the case (dkt. no. 45) for lack of personal
jurisdiction.
In support of its motion to dismiss, Kinetic HK submitted an affidavit declaring that
Kinetic HK is incorporated and headquartered in Hong Kong, owns no property in
Massachusetts, has no employees in Massachusetts, and has never done or solicited any business
in Massachusetts. In opposition, Skyworks asserts that Kinetic sells the allegedly infringing

component to Samsung in South Korea for use in cellular telephones, including phones Samsung
sells in Massachusetts.
II.

Legal Standard
In order to establish personal jurisdiction where discovery has not been conducted, a

plaintiff need only make a prima facie showing that the defendant is subject to personal
jurisdiction. Autogenomics, Inc. v. Oxford Gene Tech. Ltd., 566 F.3d 1012, 1016 (Fed. Cir.
2009). “[T]he pleadings and affidavits are to be construed in the light most favorable to [the
plaintiff].” Id.
Determining whether specific personal jurisdiction exists requires two inquiries: whether
the forum state’s long arm statute authorizes extraterritorial service of process, and whether the
assertion of personal jurisdiction over the absent defendant in the forum state would be
consistent with constitutional requirements of due process. Id. at 1017. In a patent case, a court
follows the interpretation of the long arm statute by the forum state’s highest court but looks to
Federal Circuit precedent in analyzing compliance with constitutional due process. Touchcom,
Inc. v. Bereskin & Parr, 574 F.3d 1403, 1409-10 (Fed. Cir. 2009). In this case, Skyworks has
failed to establish personal jurisdiction over Kinetic HK under either the Massachusetts Long
Arm Statute, Mass. Gen. Laws ch. 233A, § 3, or under constitutional considerations.
III.

Long Arm Statute
The inquiries under the Massachusetts Long Arm Statute and the due process clause often

converge, but they are both necessary. Even if a court is “presented with jurisdictional facts
sufficient to survive due process scrutiny, a judge would be required to decline to exercise
jurisdiction if the plaintiff was unable to satisfy at least one of the statutory prerequisites.” Good
Hope Indus., Inc. v. Ryder Scott Co., 389 N.E.2d 76, 80 (Mass. 1979).

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Skyworks argues that jurisdiction is appropriate under § 3(d) of the long arm statute:
A court may exercise personal jurisdiction over a person, who acts directly or by an
agent, as to a cause of action in law or equity arising from the person’s . . .
(d) causing tortious injury in this commonwealth by an act or omission outside this
commonwealth if he regularly does or solicits business, or engages in any other persistent
course of conduct, or derives substantial revenue from goods used or consumed or
services rendered, in this commonwealth[.]
Mass. Gen. Laws ch. 233A, § 3(d). An allegation of patent infringement may be considered a
tortious injury. Systemation, Inc. v. Engel Indus., Inc., 992 F. Supp. 58, 60 (D. Mass. 1997);
Hologic Inc. v. Lunar Corp., No. 95-cv-10008-REK, 1995 WL 661238, at *7 (D. Mass. Aug. 4,
1995) (“A patent infringement is not a tort in the conventional sense, but it is fairly considered a
‘tortious injury’ within the meaning of §§3(c) and 3(d).”). Skyworks has presented evidence that
cell phones with the allegedly infringing component were sold in Massachusetts, but that alone is
not enough to establish that Kinetic HK is responsible for infringement of Skyworks’ U.S.
patent. Skyworks offers no facts that Kinetic HK, whose contact with the microchips ends in
South Korea, has itself made or sold the patented invention within the United States or has
imported the invention into the United States. 35 U.S.C. § 271(a).
Skyworks asserts that Kinetic HK induces infringement by Samsung in the United States
and Massachusetts in particular. However, that conclusory statement lacks factual support:
Skyworks merely alleges that Kinetic HK competes with Skyworks, that Kinetic HK provides
customers such as Samsung with data sheets containing information on how to use its allegedly
infringing products, that Samsung integrates the chips into its phones, and that those phones are
sold in the United States, including in Massachusetts. (See Opp. Mot. to Dismiss at 12 (dkt. no.
59) (citing affidavits).) This is insufficient to support a claim of inducement under 35 U.S.C. §
271(b), which “requires a showing that the alleged inducer knew of the patent, knowingly

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induced the infringing acts, and possessed a specific intent to encourage another’s infringement
of the patent.” Vita-Mix Corp. v. Basic Holding, Inc., 581 F.3d 1317, 1328 (Fed. Cir. 2009).
Even accepting Skyworks’ contention that Kinetic HK must have known about the patent, it has
failed to allege anything in Kinetic HK’s relationship with Samsung that would show knowing
inducement and the requisite specific intent. To the contrary, Kinetic HK’s affidavit asserts that
“Kinetic HK and its subsidiaries do not control or direct where Samsung sells its products.
Samsung does not inform Kinetic HK how its microchips are being used or where Samsung
products containing Kinetic HK’s microchips are [being] sold. . . . Kinetic HK’s chip products
are not designed to be used in any specific geographical market and are not designed for the
United States market.” (Liu Aff., Ex. 1 ¶¶ 26, 28 (dkt. no. 52-1).)
In any event, even if there was evidence that Kinetic HK itself caused tortious injury in
Massachusetts, it does not appear that it regularly does or solicits business, engages in any
persistent course of conduct in the Commonwealth, or derives substantial revenue from goods
used or consumed in Massachusetts, as § 3(d) requires. Skyworks argues that the last condition is
satisfied, relying on Heins v. Wilhelm Loh Wetzlar Optical Machinery GmbH & Co. KG., 522
N.E.2d 989 (Mass. App. Ct. 1988). In Heins, the Massachusetts Appeals Court found that the
plaintiff satisfied the substantial revenue requirement of § 3(d) of the long arm statute in a breach
of warranty case against a West German manufacturer of optical lens grinding machines. Id. at
993-94. In that case, the foreign defendant sold completed machines, not components, to a
distributer knowing that the distributor would sell them in Massachusetts; the cost of the
machines was substantial ($56,000 each); dozens of the defendant’s completed machines were
sold in Massachusetts; and the defendant’s employees visited Massachusetts to service the
machines and to promote their sale to other potential customers. Id.

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Nothing close to those facts is present here. Kinetic HK’s part is sold to Samsung for
$0.16 apiece. The record contains no information about how much revenue Kinetic HK derives
from Samsung’s Massachusetts sales of products in which Kinetic HK’s part is incorporated.
Furthermore, unlike the defendant in Heins, Kinetic HK’s relationship with the component part
ends when it is sold to Samsung in South Korea. This case is more like Merced v. JLG Indus.,
Inc., where this Court reasoned as follows:
Hydraulic Fittings has, however, presented several compelling arguments why its sales to
JLG does not satisfy the substantial revenue prong of § 3(d). Hydraulic Fittings’ direct
involvement with the elbows concludes in Pennsylvania when it sells the elbows to JLG
there. JLG commercial dealings with Hydraulic Fittings does not alone create an agency
relationship in that they are separate entities with distinct corporate and management
structures. . . . Hydraulic Fittings neither made direct sales in Massachusetts nor
attempted to cultivate sales relationships in that state. It is not enough for JLG to argue
that Hydraulic Fittings’ benefitted from sales JLG made in Massachusetts of JLG
products containing a part it purchased from Hydraulic Fittings. At most, products that
Hydraulic Fittings sold to JLG circuitously entered into the stream of commerce in this
Commonwealth. . . . Massachusetts courts have construed the substantial revenue prong
liberally but there are still limits on Massachusetts long-arm jurisdiction. Although
Hydraulic Fittings has a degree of indirect dealings with the forum, § 3 does not extend to
these attenuated contacts.
193 F. Supp. 2d 290, 293-94 (D. Mass. 2001).
In a footnote, Skyworks also asserts that personal jurisdiction is proper pursuant to § 3(a)
because of the maintenance of a Kinetic website which is accessible in Massachusetts. The Court
already rejected that argument in dismissing the claims against Kinetic U.S. for want of personal
jurisdiction, and adheres to that conclusion.
For these reasons, the exercise of personal jurisdiction over Kinetic HK is not authorized
under the Massachusetts long arm statute.
IV.

Due Process
Similarly, Skyworks has failed to demonstrate that the exercise of personal jurisdiction

over Kinetic HK would comport with due process. The Federal Circuit utilizes a three-part test to
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determine whether specific jurisdiction over an out-of-state defendant would comport with due
process. “Specific jurisdiction exists when a non-resident defendant purposefully establishes
minimum contacts with the forum state, the cause of action arises out of those contacts, and
jurisdiction is constitutionally reasonable.” 3D Sys., Inc. v. Aarotech Labs., Inc., 160 F.3d 1373,
1378 (Fed. Cir. 1998).
Skyworks seeks help from the Supreme Court’s decision in Calder v. Jones, 465 U.S. 783
(1984). Skyworks argues that Kinetic HK intentionally infringed on a known patent held by a
Massachusetts corporation and therefore targeted its action at Massachusetts, akin to the way the
publication in California of a libelous story about a California actress was held in Calder
sufficient to support personal jurisdiction in California over the out-of-state author of the story.
But Skyworks’ allegation of targeting is unsupported. As noted already, the record indicates that
“Kinetic HK and its subsidiaries do not control or direct where Samsung sells its products.” (Liu
Aff., Ex. 1 ¶ 26.) Moreover, Skyworks’ purported extension of Calder to this patent infringement
case is not supported by apposite case law. Although the Federal Circuit has relied on Calder in
assessing minimum contacts in some circumstances, it has not decided a question of personal
jurisdiction over a patent infringement or non-infringement claim on that basis. See Silent Drive,
Inc. v. Strong Industries, 326 F.3d 1194, 1203-06 (Fed. Cir. 2003). 1 Further, the Supreme Court
recently emphasized the importance of Calder’s particular facts to its outcome:
The crux of Calder was that the reputation-based “effects” of the alleged libel connected
the defendants to California, not just to the plaintiff. The strength of that connection was
largely a function of the nature of the libel tort. . . . Calder made clear that mere injury to
a forum resident is not a sufficient connection to the forum. Regardless of where a
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The Federal Circuit’s citations to Calder have been for more general propositions. They appear
in declaratory judgment actions for patent non-infringement, invalidity, and/or unenforceability,
where the focus is on the defendant patentee’s activities in enforcing patents rather than on any
manufacture, use, or sale of infringing goods. The inquiries, and any “effects” of the relevant
activities, are therefore substantially dissimilar to those here. See, e.g., Avocent Huntsville Corp.
v. Aten Int’l Co., 552 F.3d 1324, 1332 (Fed. Cir. 2008).
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plaintiff lives or works, an injury is jurisdictionally relevant only insofar as it shows that
the defendant has formed a contact with the forum State. The proper question is not
where the plaintiff experienced a particular injury or effect but whether the defendant’s
conduct connects him to the forum in a meaningful way.
Walden v. Fiore, 134 S. Ct. 1115, 1123-25 (2014) (internal citations omitted); see also Silent
Drive, Inc., 326 F.2d at 1204 (Like Calder, “the underlying conduct is sufficiently connected to
the forum” and defendants’ activities “were all expressly aimed at” the forum.). This case does
not involve the type of effects, and the associated forum contacts, upon which Calder’s rationale
relies.
To the extent that Skyworks is proposing that personal jurisdiction must exist in the home
jurisdiction of any patent holder who alleges intentional infringement, the Supreme Court has
long rejected such reasoning. World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286, 296
(1980) (Otherwise, “[e]very seller of chattels would in effect appoint the chattel his agent for
service of process. . . . [W]e are unwilling to endorse a[ ] principle that amenability to suit would
travel with the chattel.”).
Skyworks has failed to establish a prima facie showing under the Federal Circuit’s test
because there is nothing in the record to indicate that Kinetic HK itself has undertaken any action
purposefully to establish business contacts with Massachusetts. As this Court has already found,
“[a]bsent is any intent on the part of Kinetic (either one) to bring the product to market in
Massachusetts or anywhere else in the U.S.” (Order Granting Mot. to Dismiss as to Kinetic
Technologies, Inc. at 6 (dkt. no. 45).) Any Massachusetts contacts that result from Samsung’s
decision where to sell its product are, from Kinetic HK’s standpoint, “random, fortuitous, or
attenuated” and are therefore insufficient. Burger King Corp. v. Rudzewicz, 471 U.S. 462, 475
(1985) (internal quotations omitted); Hanson v. Denckla, 357 U.S. 235, 253 (1958) (“The
unilateral activity of those who claim some relationship with a nonresident defendant cannot
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satisfy the requirement of contact with the forum State.”). Without minimum contacts,
maintenance of the suit in this forum would offend traditional notions of fair play and substantial
justice. Int’l Shoe Co. v. State of Wash., 326 U.S. 310, 316 (1945).
Skyworks makes a last attempt at personal jurisdiction by invoking the federal long arm
statute. The requirement under Federal Rule of Civil Procedure 4(k)(2)(B) that such an exercise
of jurisdiction be consistent with the Constitution forecloses the need for further inquiry.
V.

Conclusion
For the reasons stated herein, Kinetic HK’s Motion to Dismiss (dkt. no. 51) is

GRANTED.
Skyworks’ Motion for Leave to File Sur-Reply (dkt. no. 76) is DENIED because the
arguments proposed were available to be made in Skyworks’ original opposition to the motion to
dismiss. New legal theories or new evidence are improper at this stage. In light of the granting of
the motion to dismiss, Skyworks’ Motion for Leave to File First Amended Complaint (dkt. no.
73) is also DENIED.
The action is DISMISSED.
It is SO ORDERED.
/s/ George A. O’Toole, Jr.
United States District Judge

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