Aftg-Tg, LLC v. Nuvoton Technology Corp.

United States Court of Appeals for the Federal Circuit AFTG-TG, LLC AND PHILLIP M. ADAMS & ASSOCIATES, LLC, Plaintiffs-Appellants, v. NUVOTON TECHNOLOGY CORPORATION AND NUVOTON TECHNOLOGY CORPORATION AMERICA, Defendants, AND

PEGATRON CORPORATION, PEGATRON TECHNOLOGY SERVICE, INC., AND UNIHAN, Defendants-Appellees.

__________________________

2011-1306 __________________________

AFTG-TG, LLC AND PHILLIP M. ADAMS & ASSOCIATES, LLC, Plaintiffs-Appellants,

v.

WINBOND ELECTRONICS CORPORATION and WINBOND ELECTRONICS CORPORATION AMERICA, Defendants,

AFTG-TG v. NUVOTON TECH 2

AND

ASUSTEK COMPUTER INC. and ASUS COMPUTER INTERNATIONAL, INC., Defendants-Appellees,

AND

MSI COMPUTER CORP. and MICRO-STAR INTERNATIONAL CORPORATION LTD., Defendants.

__________________________

2011-1307 __________________________

Appeals from the United States District Court for the District of Wyoming in case nos. 10-CV-0227 and 10-CV- 0229, Judge Nancy D. Freudenthal. _________________________

Decided: August 24, 2012 _________________________

GREGORY D. PHILLIPS, Dumke Law, LLC, of Salt Lake City, Utah, argued for plaintiffs-appellants. On the brief was EZEKIEL R. DUMKE, IV, Quinn Dumke LLC, of Salt Lake City, Utah.

RONALD S. LEMIEUX, Cooley LLP, of Palo Alto, Cali- fornia, argued for defendants-appellees. With him on the brief was VIDYA R. BHAKAR. __________________________

3 AFTG-TG v. NUVOTON TECH

Before RADER, Chief Judge, NEWMAN, and O’MALLEY, Circuit Judges. Per Curiam opinion filed by the court. Chief Judge Rader concurs. PER CURIAM. AFTG-TG LLC (“AFTG”) and Phillip M. Adams & As- sociates, LLC (“Adams”) (collectively “AFTG”) appeal the United States District Court for the District of Wyoming’s dismissal of defendants Pegatron Corporation (“Pega- tron”), Pegatron Technology Service, Inc. (“PTS”), Unihan, ASUSTeK Computer Inc. (“ASUSTeK”), and ASUS Com- puter International (“ASUS”) for lack of personal jurisdic- tion. Because the record and pleadings demonstrate insufficient contacts with the forum state, this court affirms. I. AFTG filed two actions in the District of Wyoming, claiming that the defendants infringe several of its pat- ents. Pegatron, PTS, and Unihan are named as defen- dants in one case; ASUSTeK and ASUS are named as defendants in the other. AFTG’s allegations are the same in both cases. The complaints generally allege that the defendants’ manufacturing, use, testing, and importation of computer chips, motherboards, computers, and other products directly infringe AFTG’s patents and that the defendants knowingly and intentionally induce and contribute to others’ infringement. A list of asserted claims for the patents-in-suit accompanies the infringe- ment assertions. The complaint against Pegatron, PTS, and Unihan also alleges misappropriation of trade se- crets. In both cases, the defendants filed motions to dismiss for lack of personal jurisdiction. Because the district court relied on the complaint and

AFTG-TG v. NUVOTON TECH 4

written submissions without holding an evidentiary hearing, AFTG is required to allege only a prima facie showing that the defendants are subject to personal jurisdiction in Wyoming. Elecs. For Imaging, Inc. v. Coyle, 340 F.3d 1344, 1349 (Fed. Cir. 2003). For purposes of this evaluation, this court accepts uncontroverted allegations in the complaint as true and resolves factual disputes in the plaintiffs’ favor. Id. The district court evaluated its personal jurisdiction under Wyoming’s long-arm statute. See Trintec Indus. v. Pedre Promotional Prods., Inc., 395 F.3d 1275, 1279 (Fed. Cir. 2005). Its two-step analysis first looked to the state long-arm statute and then determined the proper applica- tion of due process requirements. Id. Wyoming’s per- sonal jurisdiction statute explicitly reaches to the full extent of the United States and Wyoming constitutions. See e.g., Wyo. Stat. Ann. § 5-l-107(a) (“A Wyoming court may exercise jurisdiction on any basis not inconsistent with the Wyoming or United States constitution.”); Markby v. St. Anthony Hosp. Sys., 647 P.2d 1068, 1070 (Wyo. 1982). Because Wyoming’s long-arm statute incor- porates the reach of due process, the district court col- lapsed the jurisdictional analysis into a single due process inquiry. Personal jurisdiction takes two forms: specific and general. “Specific jurisdiction ‘arises out of’ or ‘relates to’ the cause of action even if those contacts are ‘isolated and sporadic.’ . . . General jurisdiction arises when a defen- dant maintains ‘continuous and systematic’ contacts with the forum state even when the cause of action has no relation to those contacts.” LSI Indus. v. Hubbell Light- ing, Inc., 232 F.3d 1369, 1375 (Fed. Cir. 2000) (quoting Burger King Corp. v. Rudzewicz, 471 U.S. 462, 472-73 (1985), and Helicopteros Nacionales de Colombia, S.A. v. Hall, 466 U.S. 408, 414-16 (1984)). In the present case,

5 AFTG-TG v. NUVOTON TECH

general jurisdiction is not at issue; accordingly, the dis- trict court evaluated its specific jurisdiction over the defendants. Specific jurisdiction entails a three-part test: (1) whether the defendant purposefully directs activities at the forum’s residents; (2) whether the claim arises out of or relates to those activities; and (3) whether assertion of personal jurisdiction is reasonable and fair. Nuance Commc’ns, Inc. v. Abbyy Software House, 626 F.3d 1222, 1231 (Fed. Cir. 2010). AFTG asserted similar allegations in the action against ASUSTeK and ASUS, and in the action against Pegatron, PTS, and Unihan. AFTG does not claim that these defendants engaged in direct sales in Wyoming. Instead, AFTG argues for jurisdiction under a “stream-of- commerce” theory, contending that the defendants sold their products to various companies, who in turn sold them to consumers in Wyoming. The district court found AFTG’s “bare formulaic accu- sation,” which simply parroted the statutory language, insufficient to establish personal jurisdiction. The district court reasoned that the complaint did not allege sufficient facts to demonstrate minimum contacts with Wyoming. In particular, the trial court found that AFTG’s stream-of- commerce theory was mere conjecture. AFTG merely speculated that the defendants placed accused devices into the stream of commerce, knowing they would reach Wyoming. The record did not contain any evidence and the complaint did not allege any facts that demonstrated the defendants’ contacts with Wyoming. In the absence of such allegations, the district court rejected AFTG’s stream-of-commerce arguments. In AFTG’s action against Pegatron, PTS, and Unihan, the district court noted there was “no evidence or allega- tion that the infringing technologies or products actually

AFTG-TG v. NUVOTON TECH 6

reached Wyoming. . . . [T]he closest evidence is the con- tributory infringement and inducement claims that refer generally to users in Wyoming. These claims are insuffi- cient to permit the exercise of the Court’s jurisdiction.” Likewise, the district court determined that AFTG’s misappropriation-of-trade-secrets claim against Pegatron, PTS, and Unihan did not establish jurisdiction. The complaint vaguely alleged improper conduct in the form of the knowing use of proprietary technology protected by trade secret. According to the district court, neither the record nor the complaint set forth anything more than a conclusory accusation without a claim of any specific use of trade secrets within Wyoming. Likewise, AFTG’s supporting exhibits, which included copies of the patents, assignment, and incorporation records, related to stand- ing and did not support personal jurisdiction. Because AFTG did not provide sufficient facts to support its claims and allegations of contacts with Wyoming, the district court determined that AFTG did not make a prima facie showing of personal jurisdiction and dismissed the claims against Pegatron, PTS, and Unihan without prejudice. In the related action against ASUSTeK and ASUS, the district court reviewed declarations regarding those defendants’ contacts with Wyoming. ASUS admitted making drop shipments to Wyoming addresses at the instruction of its third-party resellers. The resellers were not residents of Wyoming. Because the shipments were not initiated by ASUS, but at the direction of third-party resellers, the district court found no purposeful direction toward Wyoming. In addition, the district court noted that AFTG did not allege or otherwise assert that its infringement claims arose from or were otherwise related to these drop shipments. The record, moreover, contained no evidence that the shipments included infringing prod- ucts. Given the extremely limited nature of ASUS’s

7 AFTG-TG v. NUVOTON TECH

contacts, and the lack of any alleged contacts by ASUSTeK, the district court concluded that exercising personal jurisdiction in Wyoming was inappropriate. The district court, accordingly, dismissed the claims against ASUS and ASUSTeK. We now review the district court’s dismissal of both actions. II. The Supreme Court has yet to reach a consensus on the proper articulation of the stream-of-commerce theory. In the absence of such a consensus, this court has as- sessed personal jurisdiction premised on the stream-of- commerce theory on a case-by-case basis by inquiring whether the particular facts of a case support the exercise of personal jurisdiction. The district court employed that fact-driven approach in these actions and correctly found insufficient contacts to support the exercise of personal jurisdiction in Wyoming. A. The Supreme Court recently revisited the stream-of- commerce theory in McIntyre Machinery, Ltd. v. Nicastro, 131 S. Ct. 2780 (2011). The Court, however, declined to resolve its long-standing split on that theory. In McIntyre, the Court was asked to revisit questions left open in Asahi Metal Industry Co. v. Superior Court of California, Solano County, 480 U.S. 102 (1987). In Asahi, the Court’s members disagreed whether a defendant could be subject to personal jurisdiction in a forum merely because the defendant had placed a product in the stream of commerce. Justice Brennan, writing for four Justices, evaluated personal jurisdiction under the stream-of- commerce theory by relying on considerations of foresee- ability. Justice Brennan wrote that “jurisdiction prem-

AFTG-TG v. NUVOTON TECH 8

ised on the placement of a product into the stream of commerce is consistent with the Due Process Clause,” for “[a]s long as a participant in this process is aware that the final product is being marketed in the forum State, the possibility of a lawsuit there cannot come as a surprise.” Asahi, 480 U.S. at 117 (opinion concurring in part and concurring in the judgment). Justice O’Connor and three other Justices rejected Justice Brennan’s approach. In their view, mere foresee- ability or awareness that “the stream of commerce may or will sweep the product into the forum State” is insuffi- cient. Id. at 112. Justice O’Connor wrote: The substantial connection between the defendant and the forum State necessary for a finding of minimum contacts must come about by an action of the defendant purposefully directed toward the forum State. The placement of a product into the stream of commerce, without more, is not an act of the defendant purposefully di- rected toward the forum State. Id. (citing Burger King, 471 U.S. at 476; Keeton v. Hustler Magazine, Inc., 465 U.S. 770, 774 (1984)) (internal quota- tion marks omitted). Because neither Justice Brennan’s nor Justice O’Connor’s test garnered a majority of the votes in Asahi, neither test prevailed as the applicable precedent. The Court declined to resolve the Asahi split in McIn- tyre. In a plurality opinion, Justice Kennedy acknowl- edged the imprecision of the metaphor “stream of commerce,” stating that “[i]t refers to the movement of goods from manufacturers through distributors to con- sumers, yet beyond that descriptive purpose its meaning

9 AFTG-TG v. NUVOTON TECH

is far from exact.” McIntyre, 131 S. Ct. at 2788. The plurality sided with Justice O’Connor’s approach in Asahi, concluding that the “principal inquiry” is “whether the defendant's activities manifest an intention to submit to the power of a sovereign. In other words, the defendant must ‘purposefully avai[l] itself of the privilege of conduct- ing activities within the forum State, thus invoking the benefits and protections of its laws.’” Id. (quoting Hanson v. Denckla, 357 U.S. 235, 253 (1958)). Justice Kennedy noted that “[t]he defendant’s transmission of goods per- mits the exercise of jurisdiction only where the defendant can be said to have targeted the forum; as a general rule, it is not enough that the defendant might have predicted that its goods will reach the forum State.” Id. He further reasoned that Justice Brennan’s approach was inconsis- tent with precedent, holding that “it is the defendant’s actions, not his expectations, that empower a State’s courts to subject him to judgment.” Id. at 2789. A court’s jurisdiction, in other words, is “a question of authority rather than fairness.” Id. Justice Breyer, joined by Justice Alito, declined to join Justice Kennedy’s plurality opinion. Justice Breyer further declined to endorse revising the jurisdictional standard at all. He acknowledged that developments in commerce and communication, such as globalization, have occurred since the Court last considered the stream-of- commerce theory. Id. at 2791. Such “modern-day conse- quences” were not at issue in McIntyre, however, and Justice Breyer deemed it unwise to revise the jurisdic- tional standard in a case that did not present those con- sequences. Id. He wrote: [O]n the record presented here, resolving this case requires no more than adhering to our precedents. . . . I would not go fur- ther. Because the incident at issue in this

AFTG-TG v. NUVOTON TECH 10

case does not implicate modern concerns, and because the factual record leaves open many questions, this is an unsuitable ve- hicle for making broad pronouncements that refashion basic jurisdictional rules. Id. at 2792-93. Thus, the crux of Justice Breyer’s concur- rence was that the Supreme Court’s framework applying the stream-of-commerce theory—including the conflicting articulations of that theory in Asahi—had not changed, and that the defendant’s activities in McIntyre failed to establish personal jurisdiction under any articulation of that theory. Id. Because McIntyre did not produce a majority opinion, we must follow the narrowest holding among the plurality opinions in that case. Marks v. United States, 430 U.S. 188, 193 (1977). The narrowest holding is that which can be distilled from Justice Breyer’s concurrence—that the law remains the same after McIntyre. B. Because we must proceed on the premise that McIn- tyre did not change the Supreme Court’s jurisdictional framework, we must apply our precedent that interprets the Supreme Court’s existing stream-of-commerce prece- dents. That precedent is Beverly Hills Fan Co. v. Royal Sovereign Corp., 21 F.3d 1558 (Fed. Cir. 1994). In Beverly Hills Fan, this court found sufficient con- tacts with the forum state, Virginia, to support the exer- cise of personal jurisdiction under any articulation of the stream-of-commerce theory. We took as true the allega- tion that the defendants made ongoing and continuous shipments of the accused infringing product into Virginia and maintained an established distribution network that encompassed Virginia. 21 F.3d at 1561, 1563, 1565. It

11 AFTG-TG v. NUVOTON TECH

was undisputed, for example, that fifty-two of the infring- ing products were available for sale in Virginia. Id. at 1564. We further found sufficient support in the plead- ings that the defendants derived revenue sufficient to satisfy the “substantial revenue” requirement under the Virginia long-arm statute. Id. at 1571. Based on these facts, we believed it was clear that the exercise of per- sonal jurisdiction in Virginia was appropriate. This court recognized in Beverly Hills Fan that the Supreme Court’s stream-of-commerce precedent was left unsettled after Asahi. Id. at 1566-67. This court, how- ever, refused to “join [the] debate” between Justice O’Connor’s and Justice Brennan’s approaches because it concluded that, on the facts of the case before it, sufficient contacts with the forum state existed to support the exercise of personal jurisdiction on any articulation of the stream-of-commerce theory. Id. (“[U]nder either version of the stream of commerce theory, . . . plaintiff has stated all of the necessary ingredients for an exercise of jurisdic- tion consonant with due process . . . .”) Thus, Beverly Hills Fan counsels that we refrain from taking a position on the proper articulation of the stream-of-commerce theory where the facts of a particular case mandate exercising or declining to exercise personal jurisdiction under any articulation of that theory. Beverly Hills Fan, in other words, stands for the cardinal rule that a court should not decide a legal issue when doing so is unneces- sary to resolve the case at hand. Subsequent panels of this court have followed that rule, finding that the evidentiary record before them made the result clear, or could make the result clear after further discovery, without requiring the court to take a side on the Asahi divide. In Viam Corp. v. Iowa Export- Import Trading Co., we found that personal jurisdiction lay in the forum state based on the record before us and

AFTG-TG v. NUVOTON TECH 12

without “join[ing] the debate in Asahi as to which version of the stream of commerce theory is the correct one, because under either theory the result we reach here would be the same.” 84 F.3d 424, 428 (Fed. Cir. 1996). In Commissariat a l’Energie Atomique v. Chi Mei Optoelec- tronics Corp., this court held that the defendants’ contacts with the forum state satisfied Justice Brennan’s test, but found the record insufficient to determine whether those contacts also satisfied Justice O’Connor’s test. 395 F.3d 1315, 1321-22 (Fed. Cir. 2005). This court, therefore, found it premature to take a position on the Asahi split. Id. at 1322. This court, instead, remanded the case to the district court for jurisdictional discovery. “If [the plaintiff] is able to satisfy Justice O’Connor’s test [after discovery], there will be no need to address whether the less restric- tive test proposed by Justice Brennan should be the standard under [the forum state’s law] and under the due process clause.” Id. at 1324. Finally, in Avocent Hunts- ville Corp. v. Aten International Co., a declaratory judg- ment action, we noted that the panel in Beverly Hills Fan declined to take a position on Asahi. 552 F.3d 1324, 1332 (Fed. Cir. 2008). We declined to take a position in Avocent Huntsville as well. Rather, we found that personal juris- diction did not lie in the forum state because, even if the patentee defendant had contact with the forum state, there was no showing that the issues of invalidity and noninfringement at issue in the declaratory judgment action were related to that contact. Id. at 1338. Here, we adhere to the Beverly Hills Fan line of cases and decline to take a position on the stream-of-commerce theory, because the result is clear and would not change under any articulation of that theory. The paltry allega- tions in the complaint cannot support the exercise of personal jurisdiction in Wyoming. A comparison of the facts here to those in Beverly Hills Fan makes that con-

13 AFTG-TG v. NUVOTON TECH

clusion apparent. The defendants’ contacts with the forum state in Beverly Hills Fan were significantly more extensive than they are here, where, at most, one of the defendants made isolated shipments to Wyoming at the request of third parties. Unlike in Beverly Hills Fan, moreover, the cause of action for patent infringement here does not arise out of the isolated Wyoming shipments. AFTG has failed to submit any declarations identifying sales in Wyoming that would refute the defendants’ assertions that their contacts with Wyoming are sporadic at best. Finally, AFTG has proffered no evidence indicat- ing that Wyoming was part of any defendant’s continuous, established distribution channels, which was a significant factor supporting the exercise of personal jurisdiction in Beverly Hills Fan. 21 F.3d at 1566 n.6. As the district court aptly observed, AFTG’s complaint represents nothing more than “bare formulaic accusation” that the defendants maintain sufficient contacts with Wyoming. This case is not a close call, regardless of how one articulates the stream of commerce theory. III. The concurrence agrees with the result we reach but attempts to distill a new rule of law from Justice Breyer’s concurrence in McIntyre. We recognize the concurrence’s desire to promote predictability in the application of the stream-of-commerce theory—an issue that has remained unsettled for more than two decades. That objective, however, is untenable in light of Justice Breyer’s confir- mation in McIntyre that the law remains unchanged. Contrary to the concurrence’s assertion, Justice Breyer did not articulate an applicable rule of law or endorse Justice O’Connor’s reasoning in Asahi when he observed that “something more” than placing a single item in the stream of commerce, with the knowledge that

AFTG-TG v. NUVOTON TECH 14

a sale may take place in the target forum state, is neces- sary to establish personal jurisdiction. McIntyre, 131 S. Ct. at 2792. Rather, he merely observed that, even Jus- tices who have disagreed on the proper articulation of the stream-of-commerce theory have agreed that “a single isolated sale, even if accompanied by the kind of sales effort indicated here,” is insufficient to establish personal jurisdiction. Id. Justice Breyer could not have been clearer when he wrote that, “on the record presented here, resolving this case requires no more than adhering to our precedents. . . . I would not go further.” Id. at 2792-93. By attempting to craft a new rule of law from Justice Breyer’s observation, the concurrence disregards Beverly Hills Fan’s directive that this court decline to take a position on Asahi when doing so is unnecessary to resolve the case at hand. District courts have adhered to the doctrine of stare decisis after McIntyre, concluding that they are obligated to follow their existing circuit prece- dent—even with the awareness that doing so furthers the Asahi divide. As one district court observed: Because the Supreme Court in McIntyre did not conclusively define the breadth and scope of the stream of commerce the- ory, as there was not a majority consensus on a singular test, . . . and given Justice Breyer’s decision to rely on current Su- preme Court precedents, [this] Court will continue to adhere to the Sixth Circuit’s analysis of purposeful availment [which adopts Justice O’Connor’s approach in Asahi.] Lindsey v. Cargotec USA, Inc., No. 4:09-cv-71, 2011 U.S. Dist. LEXIS 112781, at *19 (W.D. Ky. Sept. 30, 2011)

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(internal citation and quotation marks omitted). As another district court observed: As Justice Breyer declined to choose be- tween the Asahi plurality opinions, McIn- tyre is rather limited in its applicability. It does not provide the Court with grounds to depart from the Fifth Circuit prece- dents establishing Justice Brennan’s Asahi opinion as the controlling analysis. Ainsworth v. Cargotec USA, Inc., No. 2:10-cv-236, 2011 U.S. Dist. LEXIS 109255, at *19 (S.D. Miss. Sept. 23, 2011) (citations omitted). The concurrence believes that “this court would benefit from application of Justice Breyer’s approach to personal jurisdiction.” Concurring op. at 3. Just as the district courts are obligated to follow their existing circuit precedent, however, we are obligated to follow prior panel opinions of this court, not an obser- vation that failed to receive endorsement from a majority of the Supreme Court’s members. The concurrence’s approach, moreover, is unwise be- cause Justice Breyer’s observation that the Supreme Court has never held that “a single isolated sale” is insuf- ficient to establish personal jurisdiction may be incorrect. See McIntyre, 131 S. Ct. at 2792. In McGee v. Interna- tional Life Insurance Co., the Court endorsed the exercise of personal jurisdiction in California where a Texas-based insurance company collected premiums on a single insur- ance contract purchased by a California citizen. 355 U.S. 220, 222-24 (1957). 1 Commentators have criticized Jus-

1 This court has created its own body of stream-of- commerce precedent in patent cases rather than apply the case law of the regional circuits. This approach is based on our view that the issue “is a critical determinant of whether and in what forum a patentee can seek redress

AFTG-TG v. NUVOTON TECH 16

tice Breyer’s failure to address McGee. One commentator called it a “misunderstanding of Supreme Court prece- dent.” Todd David Peterson, The Timing of Minimum Contacts After Goodyear and McIntyre, 80 Geo. Wash. L. Rev. 202, 226 (2011). Another commentator observed that, “by not mentioning McGee, [Justice Breyer] absolved himself of distinguishing between the single policy suffi- cient there and J. McIntyre’s sale, which, although tech- nically made by its independent distributor, benefitted J. McIntyre and resulted from J. McIntyre’s own marketing efforts in the United States.” Charles W. “Rocky” Rhodes, Nineteenth Century Personal Jurisdiction Doctrine in a Twenty-First Century World, 64 Fla. L. Rev. 387, 418 (2012). This court surely is not in a position to opine on whether Justice Breyer was correct. We should be cau- tious, however, about adopting his concurrence as our own precedent in light of the pointed criticisms about the concurrence’s accuracy. We are not in a position to offer the correct formula- tion of the stream-of-commerce theory. Indeed, we cannot express such an opinion because the Supreme Court has yet to come to a consensus on the proper formulation of that theory. Unless and until the Supreme Court does so, however, we are bound to follow our own case law that applies Supreme Court precedent in its current—albeit fractured—state. Rather than relying on Justice Breyer’s observation, we can easily conclude that personal jurisdiction does not lie based on a review of the allegations in the complaint.

for infringement of its rights” and the fact that the re- gional circuits remain divided about the proper articula- tion of the stream-of-commerce theory. Beverly Hills Fan, 21 F.3d at 1564. Personal jurisdiction principles ad- dressed by the Supreme Court in non-patent cases, of course, may well be applicable in patent cases.

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Having done so, we agree with the district court that AFTG failed to establish personal jurisdiction in Wyo- ming. AFFIRMED

United States Court of Appeals for the Federal Circuit AFTG-TG, LLC AND PHILLIP M. ADAMS & ASSOCIATES, LLC, Plaintiffs-Appellants, v. NUVOTON TECHNOLOGY CORPORATION AND NUVOTON TECHNOLOGY CORPORATION AMERICA, Defendants, AND

PEGATRON CORPORATION, PEGATRON TECHNOLOGY SERVICE, INC., AND UNIHAN, Defendants-Appellees.

__________________________

2011-1306 __________________________

AFTG-TG, LLC AND PHILLIP M. ADAMS & ASSOCIATES, LLC, Plaintiffs-Appellants,

v.

WINBOND ELECTRONICS CORPORATION and WINBOND ELECTRONICS CORPORATION AMERICA, Defendants,

AFTG-TG v. NUVOTON TECH 2

AND

ASUSTEK COMPUTER INC. and ASUS COMPUTER INTERNATIONAL, INC., Defendants-Appellees,

AND

MSI COMPUTER CORP. and MICRO-STAR INTERNATIONAL CORPORATION LTD., Defendants.

__________________________

2011-1307 __________________________

Appeals from the United States District Court for the District of Wyoming in case nos. 10-CV-0227 and 10-CV- 0229, Judge Nancy D. Freudenthal. __________________________

Before RADER, Chief Judge, NEWMAN, and O’MALLEY, Circuit Judges. RADER, Chief Judge, concurring. I agree the defendant-appellees’ actions do not satisfy personal jurisdiction in Wyoming. I write separately, however, to comment further on this court’s application of McIntyre Machinery, Ltd., v. Nicastro. 131 S. Ct. 2780 (2011). The per curiam opinion relies on precedent and de- clines to revise the jurisdictional standard, but notes the Supreme Court’s divide in Asahi Metal Industry Co. v.

3 AFTG-TG v. NUVOTON TECH

Superior Court of California between Justice O’Connor’s “stream of commerce plus” or “foreseeability plus” test and Justice Brennan's mere “foreseeability” test. 480 U.S. 102 (1987). As the narrowest holding among the plurality opinions, Justice Breyer’s concurrence in McIntyre con- trols. Marks v. United States, 430 U.S. 188 (1977). In the present case, the per curiam opinion contends Justice Breyer neither endorses Justice O’Connor’s rea- soning in Asahi nor provides a rule of law. However, the McIntyre concurrence clarifies that a single sale is inade- quate “even if that defendant places his goods in the stream of commerce, fully aware (and hoping) that such a sale will take place” McIntyre, 131 S. Ct. at 2792 (empha- sis added). By acknowledging a defendant’s intent and awareness, Justice Breyer’s concurrence departs from evaluating and establishing jurisdiction on mere “foresee- ability.” In support, the McIntyre concurrence cites Justice O’Connor’s test “requiring ‘something more’ than simply placing ‘a product into the stream of commerce,’ even if defendant is ‘awar[e]’ that the stream ‘may or will sweep the product into the forum State.’” Id. at 2792 (citing Asahi, 480 U.S. at 117). Justice Breyer applies Justice O’Connor’s approach by emphasizing the relevant facts in McIntyre lacked “something more” to establish jurisdiction. Id. Emphasis on assessing the presence of “something more” would clarify the muddled “stream of commerce” concept. Accordingly, this court would benefit from appli- cation of Justice Breyer’s approach to personal jurisdic- tion. This court should examine the pleading and record to see if it evinces “something more” than a single sale or placement of goods into the stream of commerce (with knowledge that a sale may take place in the target forum state).

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Consequently, from that vantage point, Beverly Hills Fan, with its unfettered reliance on a “stream of com- merce” theory, is now shaky precedent to the extent that it runs counter to the McIntyre decision. See Beverly Hills Fan Co. v. Royal Sovereign Corp., 21 F.3d 1558, 1565 (Fed. Cir. 1994). In finding defendants’ contacts in the forum state provided sufficient warning they could be hailed into court, Beverly Hills Fan states that plaintiff’s “allegations are that defendants purposefully shipped the accused fan into Virginia through an established distribu- tion channel,” notes “[t]he cause of action for patent infringement is alleged to arise out of these activities,” and then concludes that “[n]o more is usually required to establish specific jurisdiction.” Beverly Hills Fan, 21 F.3d at 1565. In the wake of the Supreme Court’s guidance, this approach does not reflect the obligation to analyze the sufficiency of pleadings or record for “something more” that is necessary for personal jurisdiction. In sum, the mere recitation of the stream of commerce theory is insufficient for a court’s exercise of jurisdiction. This court might reliably require that “something more” be present to satisfy personal jurisdiction requirements. McIntyre, 131 S. Ct. at 2788, 2792.