NOT FOR PUBLICATION FILED UNITED STATES COURT OF APPEALS SEP 11 2018 MOLLY C. DWYER, CLERK U.S. COURT OF APPEALS FOR THE NINTH CIRCUIT
DELPHIX CORP., No. 16-16572
Plaintiff-Appellant, D.C. No. 5:16-cv-00606-BLF
v. MEMORANDUM* EMBARCADERO TECHNOLOGIES, INC.,
Defendant-Appellee.
DELPHIX CORP., No. 16-16697
Plaintiff-Appellee, D.C. No. 5:16-cv-00606-BLF
v.
EMBARCADERO TECHNOLOGIES, INC.,
Defendant-Appellant.
Appeal from the United States District Court for the Northern District of California Beth Labson Freeman, District Judge, Presiding
Argued and Submitted December 6, 2017 San Francisco, California
* This disposition is not appropriate for publication and is not precedent except as provided by Ninth Circuit Rule 36-3. Before: RAWLINSON and OWENS, Circuit Judges, and RICE,** Chief District Judge.
Delphix appeals the district court’s order dismissing the case for lack of
personal jurisdiction. Embarcadero cross-appeals the district court’s order finding
the court had subject matter jurisdiction. We have jurisdiction pursuant to 28
U.S.C. § 1291. We review the district court’s factual findings for clear error and
the issue of jurisdiction de novo. Reebok Int’l, Ltd. v. McLaughlin, 49 F.3d 1387,
1390 (9th Cir. 1995). We affirm in part and reverse in part.
“Where, as here, the defendant’s motion is based on written materials rather
than an evidentiary hearing, the plaintiff need only make a prima facie showing of
jurisdictional facts to withstand the motion to dismiss.” Ranza v. Nike, Inc., 793
F.3d 1059, 1068 (9th Cir. 2015) (citation and internal quotation marks omitted).
While “a plaintiff may not simply rest on the bare allegations of the complaint,”
“uncontroverted allegations must be taken as true, and conflicts between parties
over statements contained in affidavits must be resolved in the plaintiff’s
favor.” Id. (citation, internal quotation marks, and brackets omitted).
When a defendant moves to dismiss for lack of personal jurisdiction, the
plaintiff bears the burden of demonstrating that the court has jurisdiction. Harris
Rutsky & Co. Ins. Servs., Inc. v. Bell & Clements Ltd., 328 F.3d 1122, 1128–29
** The Honorable Thomas O. Rice, Chief United States District Judge for the Eastern District of Washington, sitting by designation.
2 (9th Cir. 2003). However, the plaintiff must make “only a prima facie showing of
jurisdictional facts to withstand the motion to dismiss.” Doe v. Unocal Corp., 248
F.3d 915, 922 (9th Cir. 2001). For purposes of deciding whether a prima facie
showing has been made, “the court resolves all disputed facts in favor of the
plaintiff.” Pebble Beach Co. v. Caddy, 453 F.3d 1151, 1154 (9th Cir. 2006); In re
W. States Wholesale Nat. Gas Antitrust Litig., 715 F.3d 716, 741 (9th Cir. 2013),
aff'd sub nom. Oneok, Inc. v. Learjet, Inc., 135 S. Ct. 1591, 191 L. Ed. 2d 511
(2015).
A. Subject Matter Jurisdiction
The district court properly found the court had subject matter jurisdiction.
Per the Declaratory Judgment Act, 28 U.S.C. § 2201, the court may “declare the
rights and other legal relations of any interested party.” “[T]he question in each
case is whether the facts alleged, under all the circumstances, show that there is a
substantial controversy, between parties having adverse legal interests, of sufficient
immediacy and reality to warrant the issuance of a declaratory judgment.” Md.
Cas. Co. v. Pac. Coal & Oil Co., 312 U.S. 270, 273 (1941).
The district court correctly found that “the record of communication
between the parties both before and after this suit was filed and the ongoing TTAB
[Trademark Trial and Appeal Board] proceedings paint a clear picture of a
‘substantial controversy’ that is ‘definite and concrete’ enough to be addressed by
3 the Court.” Although Embarcadero highlights it never threatened litigation,
Embarcadero (1) asserted the elements of trademark infringement in its opposition
to Delphix’s registration for its word mark and petition to cancel Delphix’s logo
mark, (2) represented it saw no way forward with Delphix’s use of DELPHIX as
its company name or for its products and services during settlement talks, and (3)
refused to sign a covenant not to sue Delphix for its use of the DELPHIX mark
after Delphix brought this action. Without a declaratory judgment, Delphix would
be forced to either play it safe and change its company and product name, thereby
foregoing the goodwill and incurring transition costs, or push forward and risk
having to destroy infringing product, pay additional damages, and disgorge profits
to Embarcadero. These circumstances are ripe for a declaratory judgment.
B. Personal Jurisdiction
The district court erred in finding there was no personal jurisdiction. There
are two categories of in personam jurisdiction. In 1984, the Supreme Court
explicitly recognized the distinction between what has come to be called “general
jurisdiction” and “specific jurisdiction.” 4 Wright, et al., Fed. Prac. & Proc. Civ. §
1067.5 (4th ed. 2018) (citing Helicopteros Nacionales de Colombia, S.A. v. Hall,
466 U.S. 408 (1984)); accord BNSF Ry. Co. v. Tyrrell, 137 S. Ct. 1549, 1558
(2017) (“[W]e have distinguished between specific or case-linked jurisdiction and
general or all-purpose jurisdiction.”).
4 A general jurisdiction inquiry is very different from a specific jurisdiction
inquiry. “Unlike the specific jurisdiction analysis, which focuses on the cause of
action, the defendant and the forum, a general jurisdiction inquiry is dispute blind,
the sole focus being on whether there are continuous and systematic contacts
between the defendant and the forum.” 4 Fed. Prac. & Proc. Civ. § 1067.5
(quoting Dickson Marine Inc. v. Panalpina, Inc., 179 F.3d 331, 339 (5th Cir.
1999)); see also Daimler AG v. Bauman, 571 U.S. 117, 127 (2014).
“[A] court may assert general jurisdiction over foreign (sister-state or
foreign-country) corporations to hear any and all claims against them when their
affiliations with the State are so ‘continuous and systematic’ as to render them
essentially at home in the forum State.” Daimler, 571 U.S. at 127 (quoting
Goodyear Dunlop Tires Operations, S.A. v. Brown, 564 U.S. 915, 919 (2011)).
The “paradigm” forums in which a corporate defendant is “at home” are the
corporation’s place of incorporation and its principal place of business. Id. at 137.
The exercise of general jurisdiction is not limited to these forums; in an
“exceptional case,” a corporate defendant’s operations in another forum “may be
so substantial and of such a nature as to render the corporation at home in that
State.” Id. at 138-39 & n.19.
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NOT FOR PUBLICATION FILED UNITED STATES COURT OF APPEALS SEP 11 2018 MOLLY C. DWYER, CLERK U.S. COURT OF APPEALS FOR THE NINTH CIRCUIT
DELPHIX CORP., No. 16-16572
Plaintiff-Appellant, D.C. No. 5:16-cv-00606-BLF
v. MEMORANDUM* EMBARCADERO TECHNOLOGIES, INC.,
Defendant-Appellee.
DELPHIX CORP., No. 16-16697
Plaintiff-Appellee, D.C. No. 5:16-cv-00606-BLF
v.
EMBARCADERO TECHNOLOGIES, INC.,
Defendant-Appellant.
Appeal from the United States District Court for the Northern District of California Beth Labson Freeman, District Judge, Presiding
Argued and Submitted December 6, 2017 San Francisco, California
* This disposition is not appropriate for publication and is not precedent except as provided by Ninth Circuit Rule 36-3. Before: RAWLINSON and OWENS, Circuit Judges, and RICE,** Chief District Judge.
Delphix appeals the district court’s order dismissing the case for lack of
personal jurisdiction. Embarcadero cross-appeals the district court’s order finding
the court had subject matter jurisdiction. We have jurisdiction pursuant to 28
U.S.C. § 1291. We review the district court’s factual findings for clear error and
the issue of jurisdiction de novo. Reebok Int’l, Ltd. v. McLaughlin, 49 F.3d 1387,
1390 (9th Cir. 1995). We affirm in part and reverse in part.
“Where, as here, the defendant’s motion is based on written materials rather
than an evidentiary hearing, the plaintiff need only make a prima facie showing of
jurisdictional facts to withstand the motion to dismiss.” Ranza v. Nike, Inc., 793
F.3d 1059, 1068 (9th Cir. 2015) (citation and internal quotation marks omitted).
While “a plaintiff may not simply rest on the bare allegations of the complaint,”
“uncontroverted allegations must be taken as true, and conflicts between parties
over statements contained in affidavits must be resolved in the plaintiff’s
favor.” Id. (citation, internal quotation marks, and brackets omitted).
When a defendant moves to dismiss for lack of personal jurisdiction, the
plaintiff bears the burden of demonstrating that the court has jurisdiction. Harris
Rutsky & Co. Ins. Servs., Inc. v. Bell & Clements Ltd., 328 F.3d 1122, 1128–29
** The Honorable Thomas O. Rice, Chief United States District Judge for the Eastern District of Washington, sitting by designation.
2 (9th Cir. 2003). However, the plaintiff must make “only a prima facie showing of
jurisdictional facts to withstand the motion to dismiss.” Doe v. Unocal Corp., 248
F.3d 915, 922 (9th Cir. 2001). For purposes of deciding whether a prima facie
showing has been made, “the court resolves all disputed facts in favor of the
plaintiff.” Pebble Beach Co. v. Caddy, 453 F.3d 1151, 1154 (9th Cir. 2006); In re
W. States Wholesale Nat. Gas Antitrust Litig., 715 F.3d 716, 741 (9th Cir. 2013),
aff'd sub nom. Oneok, Inc. v. Learjet, Inc., 135 S. Ct. 1591, 191 L. Ed. 2d 511
(2015).
A. Subject Matter Jurisdiction
The district court properly found the court had subject matter jurisdiction.
Per the Declaratory Judgment Act, 28 U.S.C. § 2201, the court may “declare the
rights and other legal relations of any interested party.” “[T]he question in each
case is whether the facts alleged, under all the circumstances, show that there is a
substantial controversy, between parties having adverse legal interests, of sufficient
immediacy and reality to warrant the issuance of a declaratory judgment.” Md.
Cas. Co. v. Pac. Coal & Oil Co., 312 U.S. 270, 273 (1941).
The district court correctly found that “the record of communication
between the parties both before and after this suit was filed and the ongoing TTAB
[Trademark Trial and Appeal Board] proceedings paint a clear picture of a
‘substantial controversy’ that is ‘definite and concrete’ enough to be addressed by
3 the Court.” Although Embarcadero highlights it never threatened litigation,
Embarcadero (1) asserted the elements of trademark infringement in its opposition
to Delphix’s registration for its word mark and petition to cancel Delphix’s logo
mark, (2) represented it saw no way forward with Delphix’s use of DELPHIX as
its company name or for its products and services during settlement talks, and (3)
refused to sign a covenant not to sue Delphix for its use of the DELPHIX mark
after Delphix brought this action. Without a declaratory judgment, Delphix would
be forced to either play it safe and change its company and product name, thereby
foregoing the goodwill and incurring transition costs, or push forward and risk
having to destroy infringing product, pay additional damages, and disgorge profits
to Embarcadero. These circumstances are ripe for a declaratory judgment.
B. Personal Jurisdiction
The district court erred in finding there was no personal jurisdiction. There
are two categories of in personam jurisdiction. In 1984, the Supreme Court
explicitly recognized the distinction between what has come to be called “general
jurisdiction” and “specific jurisdiction.” 4 Wright, et al., Fed. Prac. & Proc. Civ. §
1067.5 (4th ed. 2018) (citing Helicopteros Nacionales de Colombia, S.A. v. Hall,
466 U.S. 408 (1984)); accord BNSF Ry. Co. v. Tyrrell, 137 S. Ct. 1549, 1558
(2017) (“[W]e have distinguished between specific or case-linked jurisdiction and
general or all-purpose jurisdiction.”).
4 A general jurisdiction inquiry is very different from a specific jurisdiction
inquiry. “Unlike the specific jurisdiction analysis, which focuses on the cause of
action, the defendant and the forum, a general jurisdiction inquiry is dispute blind,
the sole focus being on whether there are continuous and systematic contacts
between the defendant and the forum.” 4 Fed. Prac. & Proc. Civ. § 1067.5
(quoting Dickson Marine Inc. v. Panalpina, Inc., 179 F.3d 331, 339 (5th Cir.
1999)); see also Daimler AG v. Bauman, 571 U.S. 117, 127 (2014).
“[A] court may assert general jurisdiction over foreign (sister-state or
foreign-country) corporations to hear any and all claims against them when their
affiliations with the State are so ‘continuous and systematic’ as to render them
essentially at home in the forum State.” Daimler, 571 U.S. at 127 (quoting
Goodyear Dunlop Tires Operations, S.A. v. Brown, 564 U.S. 915, 919 (2011)).
The “paradigm” forums in which a corporate defendant is “at home” are the
corporation’s place of incorporation and its principal place of business. Id. at 137.
The exercise of general jurisdiction is not limited to these forums; in an
“exceptional case,” a corporate defendant’s operations in another forum “may be
so substantial and of such a nature as to render the corporation at home in that
State.” Id. at 138-39 & n.19.
“[C]ourts must examine the defendant’s contacts with the forum at the time
of the events underlying the dispute when determining whether they have
5 jurisdiction.” Steel v. United States, 813 F.2d 1545, 1549 (9th Cir. 1987). “[O]ne
cannot defeat personal jurisdiction by a move away from the state in which the
underlying events took place.” Id. Accordingly, a general jurisdiction inquiry
should consider all of a defendant’s contacts with the forum state prior to the filing
of the lawsuit, rather than just those contacts that are related to the particular cause
of action the plaintiff asserts. 4 Fed. Prac. & Proc. Civ. § 1067.5. In determining
“how far back from either the accrual or filing of the claim they will look; most
courts use a ‘reasonable time’ standard yielding timeframes of roughly three to
seven years.” Id. (citing e.g., Helicopteros, 466 U.S. at 409–11 (seven year look)).
Here, Embarcadero is a Delaware corporation that maintained its
headquarters in California up until at least October 2015. At that time,
Embarcadero was purchased by Idera, Inc., a Texas-based company. Embarcadero
claims that its headquarters are now in Austin, Texas. Understandably, it took
months to transfer Embarcadero’s headquarters and change its corporate records to
reflect its new location. Plaintiff filed suit on February 4, 2016. In July 2016,
Plaintiff gathered and proffered to the district court extensive evidence showing
Embarcadero continued to represent that its headquarters were located in
California.
For at least two decades Embarcadero’s headquarters were located in
California and it engaged in “continuous and systematic” activities within
6 California, including directing or performing all the alleged conduct which
generates the subject matter jurisdiction for this suit. That conduct started in April
2012 and continued through May 2016. The purchase of Embarcadero by Idera,
Inc. in October 2015 did not instantaneously dissolve the general jurisdictional
nexus Embarcadero had established by its continuous and systematic operations in
Moreover, were these facts viewed through the lens of specific personal
jurisdiction, the result would be the same. Critically, the instant action is about
Delphix’s right to use the DELPHIX mark as its business name and on its product
(in light of Embarcadero’s rights to the DELPHI mark). This issue is beyond the
jurisdiction of the TTAB proceeding in Virginia, which only involved the disputed
right to register the mark. As such, when Embarcadero challenged Delphix’s right
to use the DELPHIX mark during settlement talks in California, this conduct was
not directed at Virginia, but rather was directed at Delphix in California, where
both companies were operating at that time.
When every aspect of the case – from the parties to the underlying disputed
rights – is completely centered in California, we cannot say the exercise of specific
jurisdiction in California would be unfair or unreasonable. See Bancroft &
Masters, Inc. v. Augusta Nat’l, Inc., 223 F.3d 1082, 1086 (9th Cir. 2000),
overruled in part on other grounds by Yahoo! Inc. v. La Ligue Contre Le Racisme
7 Et L’Antisemitisme, 433 F.3d 1199, 1207 (9th Cir. 2006) (en banc). Costs are to be
taxed against the Defendant-Appellee and Cross-Appellant Embarcadero
Technologies, Inc..
AFFIRMED IN PART; REVERSED IN PART.