Free Order - District Court of California - California

Case 3:07-cv-04820-MMC

Document 86

Filed 06/20/2008

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1 2 3 4 5 6 7 FOR THE NORTHERN DISTRICT OF CALIFORNIA 8 9 10 For the Northern District of California 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Before the Court is defendant Aeromechanical Services Ltd.'s ("AMS") Motion to Dismiss, filed May 12, 2008. Plaintiffs Star Navigation Systems Group Ltd. and Viraf Kapadia (collectively, "Star") have filed opposition, to which AMS has replied. Having read and considered the papers filed in support of and in opposition to the motion, the Court finds it appropriate to afford Star leave to file a supplemental memorandum with respect to two issues raised for the first time, albeit not improperly, in AMS's reply. A. Joinder In its opposition to the motion, in response to AMS's argument that Star has not met the requirements of Rule 19 with respect to patent owner Hilary Vieira ("Vieira"), Star argues that the requisite showing has been made to support a finding that Vieira is properly named as an involuntary plaintiff. In its reply, AMS points out that Star has failed to allege v. AEROMECHANICAL SERVICES LTD., Defendant / United States District Court STAR NAVIGATION SYSTEMS GROUP LTD., et al., Plaintiffs, HILARY VIEIRA, Involuntary Plaintiff, No. C-07-4820 MMC ORDER AFFORDING PLAINTIFFS LEAVE TO FILE SUPPLEMENTAL MEMORANDUM RE: DEFENDANT'S MOTION TO DISMISS; CONTINUING HEARING; CONTINUING CASE MANAGEMENT CONFERENCE IN THE UNITED STATES DISTRICT COURT

Case 3:07-cv-04820-MMC

Document 86

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or argue, let alone offer any evidence to support a finding, that Vieira is outside this Court's jurisdiction, which deficiency, AMS contends, precludes joinder of Vieira as an involuntary plaintiff. Joinder by an exclusive licensee of a patent owner as an involuntary plaintiff is improper in the absence of a showing that, inter alia, the patent owner is "beyond the reach of process." See Independent Wireless Telegraph Co. v. Radio Corp., 269 U.S. 459, 473 (1926). If the patent owner can be served with process, an exclusive licensee must name the patent owner as a defendant and make him a party by service of process. See id. at 468 ("If the owner of a patent, being within the jurisdiction, refuses or is unable to join an exclusive licensee as coplaintiff, the licensee may make him a party defendant by process, and he will be lined up by the court in the party character which he should assume."); see, e.g., Water Technologies Corp. v. Calco, Ltd., 576 F. Supp. 767, 771 (N.D. Ill. 1983) (affording licensees leave to amend to join patent owner "as a defendant if it can be served, or as an involuntary plaintiff if it cannot be served"). Accordingly, the Court finds it appropriate to afford Star leave to file supplemental opposition to set forth why, given Vieira's apparent refusal to agree to be added as a plaintiff, Star should not be required to name Vieira as a defendant and to thereafter make him a party by service of process. B. Personal Jurisdiction In its opposition to AMS's motion, in response to AMS's argument that no basis exists for the Court to exercise personal jurisdiction over AMS, Star argues it has evidence suggesting certain facts exist, and further argues such facts, if established, would be sufficient to support a finding of specific personal jurisdiction as to AMS; Star requests an opportunity to take jurisdictional discovery in an effort to establish those facts. In its reply, AMS points out that Star has failed to show how the factual assertions made in the opposition are relevant to any claim made in the Second Amended Complaint. In order to establish specific jurisdiction over a defendant, the plaintiff must establish, inter alia, "the claim [alleged in the complaint] arises out of or relates to the 2

Case 3:07-cv-04820-MMC

Document 86

Filed 06/20/2008

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defendant's activities with the forum state." See Pennington Seed, Inc. v. Produce Exchange No. 299, 457 F. 3d 1334, 1344 (Fed. Cir. 2006). Consequently, in the absence of a showing that Star's claims arise out of or relate to the activities as to which Star seeks discovery, leave to conduct such discovery would not be warranted. See, e.g., Commissariat a L'Energie v. Chi Mei Optoelectronics Corp., 395 F. 3d 1315, 1323 (Fed. Cir. 2005) (holding plaintiff entitled to jurisdictional discovery where plaintiff made "sufficient threshold showing to merit" discovery). Accordingly, the Court finds it appropriate to afford Star leave to file supplemental opposition to demonstrate how any of the claims alleged herein arise out of or relate to the activities as to which discovery is sought. CONCLUSION For the reasons stated above: 1. Star shall file, no later than July 18, 2008, any Supplemental Opposition, not to exceed eight pages in length exclusive of exhibits, to address the two issues identified above. 2. AMS shall file, no later than August 1, 2008, any Supplemental Reply, not to exceed six pages in length exclusive of exhibits.1 3. The hearing on AMS's motion is hereby CONTINUED from June 20, 2008 to August 22, 2008. 4. The Case Management Conference is hereby CONTINUED from July 25, 2008 to September 19, 2008. A Joint Case Management Statement shall be filed no later than September 12, 2008. IT IS SO ORDERED.

Dated: June 20, 2008 MAXINE M. CHESNEY United States District Judge In any such Supplemental Reply, AMS should address Star's proposed schedule for jurisdictional discovery. 3
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