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Rockwell Automation, Inc. v. Beckhoff Automation, LLC

United States District Court, D. Nevada

May 30, 2014

ROCKWELL AUTOMATION, INC., Plaintiff,
v.
BECKHOFF AUTOMATION, LLC et al., Defendants

Page 1237

For Rockwell Automation, Inc., Plaintiff, Counter Defendant: Aaron Shane Foldenauer, Gregory Joseph Carbo, Paul Jonathan Tanck, LEAD ATTORNEYS, Chadbourne & Parke LLP, New York, NY; Abbe David Lowell, LEAD ATTORNEY, Chadbourne & Parke LLP, Washington, DC; Jonathan W Fountain, Michael J. McCue, LEAD ATTORNEYS, Lewis Roca Rothgerber LLP, Las Vegas, NV.

For Beckhoff Automation LLC, Beckhoff Automation GmbH, Defendants: Chad R. Fears, LEAD ATTORNEY, Paul W. Shakespear, Snell & Wilmer, LLP, Las Vegas, NV; Kenneth Eli Levitt, Peter McCreery Lancaster, Shannon L Bjorklund, LEAD ATTORNEYS, Dorsey & Whitney, Minneapolis, MN.

For Beckhoff Automation LLC, Beckhoff Automation GmbH, Counter Claimants: Chad R. Fears, LEAD ATTORNEY, Snell & Wilmer, LLP, Las Vegas, NV; Kenneth Eli Levitt, Peter McCreery Lancaster, Shannon L Bjorklund, LEAD ATTORNEYS, Dorsey & Whitney, Minneapolis, MN.

Page 1238

ORDER

ROBERT C. JONES, United States District Judge.

This case arises out of the alleged infringement of five of Plaintiff's Patents for its motor systems. Pending before the Court, inter alia, are a Motion for Preliminary Injunction (ECF No. 8), a Motion to Dismiss for Lack of Personal Jurisdiction and to Transfer Venue (ECF No. 51), a Motion to Strike Affirmative Defense for Invalidity (ECF No. 53), a Motion to Dismiss Counterclaim for Invalidity (ECF No. 54), and a Motion to Reconsider the Magistrate Judge's Order (ECF No. 94).

I. FACTS AND PROCEDURAL HISTORY

Plaintiff Rockwell Automation, Inc. (" Rockwell" ) is a Delaware corporation with its principal place of business in that state. (Compl. ¶ 1, Sept. 5, 2013, ECF No. 1). Defendant Beckhoff Automation, LLC (" Beckhoff" ) is a Maryland limited liability company with its principal place of business in Minnesota. ( See id. ¶ 2). Defendant Beckhoff Automation GmbH (" Beckhoff Germany" ) is a German corporation with its principal place of business in Germany. ( Id. ¶ 3).

Plaintiff is the owner by assignment of U.S. Patent Nos. 5,994,798 (" Closed-Path Linear Motor" ); 5,965,96 (" Linear Motor with a Plurality of Stages Independently Movable on the Same Path" ); 6,274,952 (" Closed-Path Linear Motor" ); 6,803,681 (Path Module for a Linear Motor, Modular Linear Motor System, and Method to Control Same" ); and 6,713,902 (" Closed-Path Linear Motor" ). ( Id. ¶ ¶ 9-23). Plaintiff sued Defendants in this Court, alleging direct infringement of each of the Patents under 35 U.S.C. § 271(a) " by making, using, offering for sale, selling within the United States, and/or importing into the United States its products, including but not limited to its products identified as the 'XTS' and 'eXtended Transport System,'" ( see id. ¶ ¶ 25, 33, 41, 49, 57), and indirect infringement of each of the Patents under § 271(b) and/or (c) " by providing and/or selling the products identified above to customers and/or users of those products," ( see id. ¶ ¶ 27, 35, 43, 51, 59). The Court granted a motion for a temporary restraining order in part, restraining Defendants, inter alia, from accepting orders for the XTS system for sale within the United States or transporting the XTS system products and components exhibited at the Pack Expo 2013 show in Las Vegas, Nevada outside of the United States. The accompanying preliminary injunction motion remains pending. Defendants have moved to dismiss as against Beckhoff Germany for lack of personal jurisdiction and to transfer the case to the District of Minnesota. Plaintiff has moved to dismiss Defendants' counterclaim for invalidity and to strike Defendants' affirmative defense for invalidity.

II. LEGAL STANDARDS

A. Personal Jurisdiction

A defendant may move to dismiss for lack of personal jurisdiction. See Fed.R.Civ.P. 12(b)(2). Jurisdiction exists if: (1) provided for by law; and (2) the exercise of jurisdiction comports with due process. See Greenspun v. Del E. Webb Corp., 634 F.2d 1204, 1207 (9th Cir. 1980). When no federal statute governs personal jurisdiction, a federal court applies the law of the forum state. See Boschetto v. Hansing, 539 F.3d 1011, 1015 (9th Cir. 2008). Where a forum state's long-arm statute provides its courts jurisdiction to the fullest extent of the Due Process Clause of the Fourteenth Amendment,

Page 1239

such as Nevada's does, see Arbella Mut. Ins. Co. v. Eighth Judicial Dist. Court, 122 Nev. 509, 134 P.3d 710, 712 (Nev. 2006) (citing Nev. Rev. Stat. § 14.065), a court need only apply federal due process standards, see Boschetto, 539 F.3d at 1015.[1]

There are two categories of personal jurisdiction: general jurisdiction and specific jurisdiction. General jurisdiction exists over a defendant who has " substantial" or " continuous and systematic" contacts with the forum state such that the assertion of personal jurisdiction over her is constitutionally fair even where the claims are unrelated to those contacts. See Tuazon v. R.J. Reynolds Tobacco Co., 433 F.3d 1163, 1171 (9th Cir. 2006) (citing Helicopteros Nacionales de Colombia, S.A. v. Hall, 466 U.S. 408, 415, 104 S.Ct. 1868, 80 L.Ed.2d 404 (1984)). A state court has general jurisdiction over the state's own residents, for example.

Even where there is no general jurisdiction over a defendant, specific jurisdiction exists when there are sufficient minimal contacts with the forum state such that the assertion of personal jurisdiction " does not offend 'traditional notions of fair play and substantial justice.'" Int'l Shoe Co. v. State of Wash., Office of Unemployment Comp. & Placement, 326 U.S. 310, 316, 66 S.Ct. 154, 90 L.Ed. 95 (1945) (quoting Milliken, 311 U.S. at 463). The standard has been restated using different verbiage. See Hanson v. Denckla, 357 U.S. 235, 253, 78 S.Ct. 1228, 2 L.Ed.2d 1283 (1958) (" [I]t is essential in each case that there be some act by which the defendant purposefully avails itself of the privilege of conducting activities within the forum State, thus invoking the benefits and protections of its laws." (citing Int'l Shoe Co., 326 U.S. at 319)); World-wide Volkswagen Corp. v. Woodson, 444 U.S. 286, 297, 100 S.Ct. 559, 62 L.Ed.2d 490 (1980) (" [T]he foreseeability that is critical to due process analysis is not the mere likelihood that a product will find its way into the forum State. Rather, it is that the defendant's conduct and connection with the forum State are such that he should reasonably anticipate being haled into court there." (citing Kulko v. Superior Court of Cal., 436 U.S. 84, 97-98, 98 S.Ct. 1690, 56 L.Ed.2d 132 (1978))). From these cases and others, the Ninth Circuit has developed a three-part test for specific jurisdiction:

Page 1240

(1) The non-resident defendant must purposefully direct his activities or consummate some transaction with the forum or resident thereof; or perform some act by which he purposefully avails himself of the privilege of conducting activities in the forum, thereby invoking the benefits and protections of its laws;
(2) the claim must be one which arises out of or relates to the defendant's forum-related activities; and
(3) the exercise of jurisdiction must comport with fair play and substantial justice, i.e. it must be reasonable.

Boschetto, 539 F.3d at 1016 (quoting Schwarzenegger v. Fred Martin Motor Co., 374 F.3d 797, 802 (9th Cir. 2004)).

The plaintiff bears the burden on the first two prongs. If the plaintiff establishes both prongs one and two, the defendant must come forward with a " compelling case" that the exercise of jurisdiction would not be reasonable. But if the plaintiff fails at the first step, the jurisdictional inquiry ends and the case must be dismissed.

Id. (citations omitted). The " purposeful direction" option of the first prong uses the " Calder -effects" test, under which " the defendant allegedly must have (1) committed an intentional act, (2) expressly aimed at the forum state, (3) causing harm that the defendant knows is likely to be suffered in the forum state." Brayton Purcell LLP v. Recordon & Recordon, 606 F.3d 1124, 1128 (9th Cir. 2010) (quoting Yahoo! Inc. v. La Ligue Contre Le Racisme Et L'Antisemitisme, 433 F.3d 1199, 1206 (9th Cir. ...


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