BELL NORTHERN RESEARCH, LLC

v.

HMD AMERICA, INC.

Bell Northern Research, LLC, ) Plaintiff, ) ) Civil Action No. 22-22706-Civ-Scola v. )

) HMD America, Inc., and others, ) Defendants. )

Order on Motion to Dismiss This matter is before the Court on the motion to dismiss filed by Defendant Unisoc Technologies Co. Ltd. (“Unisoc”).¹ (Mot. to Dismiss, ECF No. 91).

Plaintiff Bell Northern Research, LLC (“BNR”) has responded in opposition. (Resp., ECF No. 127.) Defendant Unisoc timely replied. (ECF No. 133.) Having reviewed the briefing, the record, and the relevant authorities, the Court grants Defendant Unisoc’s motion to dismiss. (ECF No. 91.)

1. Background

The Plaintiff brings this case asserting thirteen separate claims for patent infringement against each of the Defendants. (Compl. ¶¶ 114-388, ECF No. 1.) BNR’s claims all relate to certain Nokia mobile phones and tablets, which BNR alleges infringe on multiple of its patents, all related to mobile phones and other similar devices. (Id. ¶¶ 41, 113.) Each individual claim is asserted against all of the Defendants and relates to one specific patent that BNR alleges each of the Defendants is infringing. (Id. ¶¶ 114-388.) BNR generally alleges that the Defendants in this case “make, use, sell, import and/or provide or cause to be used” the infringing Nokia phones and tablets.² (Id. ¶ 41.) Unisoc, BNR alleges, is a Chinese corporation with its principal place of business in Shanghai, China. (Id. ¶ 10.) BNR alleges that Unisoc “sells and offers to sell products and services into the stream of commerce that incorporate infringing technology, knowing that they would be sold in this judicial district and elsewhere in the United States.” (Id.) Other than identifying certain Nokia phones and tablets that it alleges infringe on its patents, BNR

First, Unisoc maintains a website, on which it advertises its chipsets and promotes the fact that its chipsets are incorporated into multiple Nokia devices. (Id. Ex. A at 1-4, 10-11, 13-15, 18-20.) Unisoc does not, however, offer its chipsets or the identified Nokia devices for sale on its website. (Id.) Instead, its website includes links to Nokia’s website where it references those devices. (Id.) Nokia’s website also appears to advertise the existence of the mobile phones and tablets in question, although like Unisoc, it does not appear to offer the devices for sale online. (Id. Ex. A at 5, 8, 12, 16-17, 21-23.) Instead, BNR provides links

2. Legal Standard

On a motion to dismiss for lack of personal jurisdiction under Rule 12(b)(2), the plaintiff must initially establish a prima facie case of personal jurisdiction, after which the burden shifts to the defendant to counter the plaintiff’s allegations. See id. at *7. If the defendant meets this burden, the plaintiff must produce evidence to support jurisdiction—merely rearticulating its allegations is not sufficient. See id. (quoting Polskie Linie Oceaniczne v. Seasafe Transp. A/S, 795 F. 2d 968, 972 (11th Cir. 1986)).

Where evidence conflicts, the court must “construe all reasonable inferences in favor of the non-movant plaintiff.” PVC Windoors, Inc. v. Babbitbay Beach Const., N.V., 598 F. 3d 802, 810 (11th Cir. 2010).

3. Discussion

Unisoc presents sufficient evidence through its jurisdictional declaration to overcome any of BNR’s jurisdictional allegations, and BNR fails to present sufficient evidence in turn to support its allegations. While BNR’s allegations satisfy Florida’s long-arm statute, the constitutional requirements of due process do not support the Court’s ability to exercise personal jurisdiction. Rather, BNR fails to establish that Unisoc has sufficient minimum contacts with Florida, and Unisoc sufficiently demonstrates that the exercise of personal

A defendant challenging personal jurisdiction must present evidence to counter the plaintiff’s allegations. See Internet Solutions Corp. v. Marshall, 557 F. 3d 1293, 1295 (11th Cir. 2009).

Once the defendant has presented sufficient evidence, “the burden shifts to the plaintiff to prove jurisdiction by affidavits, testimony or documents.” Id. In federal-question cases, such as patent-infringement lawsuits, a court must first ensure that it has personal jurisdiction over the defendant under the relevant state’s long-arm statute. See Cable/Home Commc’n Corp. v. Network Prods., Inc., 902 F. 2d 829, 855–56 (11th Cir. 1990); see Fed. R. Civ. P. 4(k)(1)(A). Florida’s long-arm statute “must be strictly construed, and any doubts about the applicability of the statute are resolved in favor of the defendant and against a conclusion that personal jurisdiction exists.” See Interim Healthcare, 2020 WL 3078531, at *8 (quoting Gadea v. Star Cruises, Ltd., 949 So. 2d 1143, 1150 (Fla. 3d DCA 2007)). If personal jurisdiction is appropriate under the state long-arm statute, the court must then “analyze this long-arm jurisdiction under the due process requirements of the federal constitution.” Cable/Home Commc’n, 902 F. 2d at 857.

A. Florida Long-Arm Statute

Under Fla. Stat. § 48.193(1)(a)(2), a nonresident is subject to personal jurisdiction in Florida “for any cause of action arising from . . . committing a tortious act within Florida.” See Fla. Stat. § 48.193(1)(a)(2) (cleaned up).

This long-arm jurisdiction even extends to defendants who committed their tortious acts outside the state if their acts “cause injury in Florida.” Posner v. Essex Ins. Co., Ltd., 178 F. 3d 1209, 1216 (11th Cir. 1999).

For the purposes of this analysis, patent infringement is considered a tort. Elite Aluminum Corp. v. Trout, 451 F. Supp. 2d 1311, 1314 (S.D. Fla. 2006) (Dimitrouleas, J.) (“In determining whether jurisdiction can be established under tortious conduct provisions of a state long-arm statute, courts have held that patent infringement constitutes a tortious act for the purposes of establishing personal jurisdiction.”) The Plaintiff alleges that Unisoc “sells and offers to sell products and services into the stream of commerce that incorporate infringing technology, knowing that they would be sold in this judicial district and elsewhere in the United States.” (Compl. ¶ 10.) Although Unisoc rebuts the allegation that it sells the allegedly infringing Nokia phones and tablets, it does not specifically challenge that the devices are sold in some form in Florida. (Decl. of Z. Zhang.) This allegation, then, although threadbare and nearly conclusory, offers just enough to meet the requirements of Florida’s long-arm statue: it alleges that Unisoc makes an infringing product, and that product is sold in Florida, so Unisoc is alleged to be committing a tort in Florida. Fla. Stat. § 48.193(1)(a)(2); Elite Aluminum, 451 F. Supp. 2d at 1314.7

B. Due Process

While personal jurisdiction is warranted under Florida’s long-arm statute, the Court must assure itself that the exercise of personal jurisdiction is consistent with due process. Due process “protects an individual’s liberty interest in not being subject to the binding judgments of a forum with which he has established no meaningful contacts, ties, or relations.” Burger King Corp. v. Rudzewicz, 471 U.S. 462, 471–72 (1985) (internal quotations omitted).

This liberty interest is particularly acute where the alleged contacts at issue occurred through the Internet. Activity posted online could be shared across hundreds of jurisdictions without the defendant’s intent or knowledge. Such activity could easily bring a defendant into a jurisdiction based only on “random, fortuitous, or attenuated contacts” with the forum. See id. at 475 (cleaned up).

That, due process does not permit. With that in mind, the Eleventh Circuit uses a three-part test⁸ to determine whether the exercise of personal jurisdiction comports with due process: (1) whether the plaintiff’s claims arise out of or relate to at least one of the defendant’s contacts with the forum;

As to the first prong (arising out of or relatedness), a court should “focus on the direct causal relationship between the defendant, the forum, and the litigation.” Id. at 1355–56. As to the second prong (purposeful availment), a court may apply the traditional minimum-contacts test, or, in intentional-tort cases, may utilize the effects test. “Under the ‘effects test,’ a nonresident defendant’s single tortious act can establish purposeful availment, without regard to whether the defendant had any other contacts with the forum state.” Id. at 1356 (citation omitted). “This occurs when the tort: (1) was intentional; (2) was aimed at the forum state; and (3) caused harm that the defendant should have anticipated would be suffered in the forum state.” Id. (cleaned up).

As to the third prong (fair play and substantial justice), a court should “consider these factors: (1) the burden on the defendant; (2) the forum’s interest in adjudicating the dispute; (3) the plaintiff’s interest in obtaining convenient and effective relief; and (4) the judicial system’s interest in resolving the dispute.” Id. at 1358 (quotation marks omitted).

Therefore, the Court turns to the three tests identified above: (1) arising out of or relatedness; (2) purposeful availment; and (3) fair play and substantial justice. (1) Arising Out of or Relatedness “A fundamental element of the specific jurisdiction calculus is that plaintiff’s claim must arise out of or relate to at least one of the defendant’s contacts with the forum.” Fraser v. Smith, 594 F. 3d 842, 850 (11th Cir. 2010) (cleaned up).

Unisoc has no contacts with Florida, however, other than a website that is accessible in Florida. (Decl. of Z. Zhang ¶ 1-12; Decl. of C. Clayton Ex. A.).

Because this Court has previously assumed the existence of a website accessible in Florida is sufficient to meet the relatedness test, however, the Court will do so again here.⁹ Frida Kahlo Corp. v. Pinedo, No. 18-21826-Civ, 2021 WL 4147876, at *5 (S.D. Fla. Sept.¹³, 2021) (Scola, J.).

Under the “minimum contacts” test, the contacts must “(1) [be] related to the plaintiff’s cause of action; (2) involve some act by which the defendant purposefully availed [itself] of the privileges of doing business within the forum; and (3) [be] such that the defendant should reasonably anticipate being haled into court in the forum.” Louis Vuitton, 736 F. 3d at 1357. In particular, the Court finds that the Plaintiff has not met the second and third prongs, because BNR cannot point to a specific act where Unisoc purposefully availed itself of doing business in Florida, and nothing in BNR’s allegations or supplemental evidence demonstrates that Unisoc could have reasonably anticipated being haled into court in Florida. Before explaining why BNR fails to satisfy these two prongs, the Court must first address the “stream of commerce” test, how it affects the Court’s minimum contacts analysis, and explain why the primary case that BNR relies on for its argument—Viavi Solutions Inc. v. Zhejiang Crystal-Optech Co Ltd.—is not helpful in addressing the parties’ dispute here. No. 21-00378-Civ, 2022 U.S. Dist. Lexis 205106 (E.D. Tex. Nov.¹⁰, 2022).

The Court begins with the Supreme Court’s discussion of the “stream of commerce” test in Asahi because the parties rely heavily on it in their briefing (likely because, absent this consideration, Unisoc completely lacks any meaningful contacts with Florida). 480 U.S. at 113-14. In Asahi, Petitioner Asahi Metal Industry Co., Ltd. (“Asahi,” a Japanese corporation) manufactured tire valve assemblies in Japan. Id. at 105-06. One of its valve assemblies was eventually involved in a motorcycle accident in California, allegedly causing the accident at least in part when the motorcycle’s tire exploded. Id. The victim of the motorcycle accident named Cheng Shin Rubber Industrial Co., Ltd. (“Cheng Shin,” a Taiwanese corporation) as a defendant in a California state-court action because Cheng Shin had manufactured the motorcycle’s tire. Id. Cheng Shin, in turn, sought indemnity from Asahi because it had purchased the tire’s valve assembly from Asahi. Id. Of relevance to the Court here, Asahi challenged the California court’s jurisdiction over it based on several facts: (1) it was a Japanese corporation, based in Japan, that operated in Japan; (2) its sales to Cheng Shin took place in Taiwan; and (3) it delivered the tire valve assemblies to Cheng Shin in Taiwan. Id. at 106-07. While the California courts determined that they could exercise personal jurisdiction over Asahi based on Asahi’s status as a company doing “business on an international scale,” the Supreme Court ultimately held that Asahi was not subject personal jurisdiction in California under the due process protections of the Fourteenth Amendment. Id. at 113-14. In arriving at this conclusion, however, the Supreme Court fractured into several pluralities and reached three different outcomes with regards to whether Asahi had “sufficient minimum contacts” with California to justify the exercise of specific personal jurisdiction.¹⁰ Id. at 113-14, 121-22. Writing for the plurality with regards to minimum contacts, Justice O’Connor developed what has since been termed the “stream of commerce” test or more clearly the “stream of commerce plus” test. Id. at 113.

Under this test, a finding of specific personal jurisdiction requires “something more than that the defendant was aware of its product’s entry into the forum State through the stream of commerce in order for the State to exert jurisdiction over the defendant.” Id. at 111 (emphasis added).

In other words, “a defendant’s awareness that the stream of commerce may or will sweep the product into the forum State does not convert the mere act of placing the product into the stream into an act purposefully directed toward the forum State.” Id. at 112.

Rather, a defendant must undertake some additional act meant to purposefully direct its conduct toward the forum state, such as designing its product for that state’s market, advertising in the state, or marketing through a specific distributor in that state. Id. Based on this formulation of the minimum contacts requirement, the plurality determined that Asahi did not have sufficient minimum contacts with California. Id. In his concurrence, Justice Stevens neither affirmatively endorsed nor expressly disavowed the plurality’s test, but instead found that the plurality misapplied its own test on the facts of the case. Id. at 121-22. Justice Stevens thought that the large number of units of valve assemblies that Asahi produced (over 100,000 annually, for several years) was sufficient to find purposeful availment. Id.

Finally, Justice Brennan (joined by Justices White, Marshall, and Blackmun) disagreed with the plurality’s formulation of the “stream of commerce plus” test. Rather, he thought that Asahi’s awareness of the likelihood that its valve assemblies would reach California through the stream of commerce after it sold them to Cheng Shin, knowing that Cheng Shin did

First, Viavi does not conduct much analysis of the Asahi tests—instead, it simply finds that both tests would be satisfied, without exploring the distinctions between them. Id. at 14-15.

Second, Viavi expressly observed that the defendant in that case was alleged to have specifically designed the camera filters in question for sale in the United States and Texas markets. Id. at *9. Although Viavi does not explicitly point this out, that key fact meant the defendant there met one of the possible “plus” factors required in the Asahi plurality’s test. Id.; Asahi, 480 U.S. at 113-14. Here, instead, the Court is left with jurisdictional allegations and evidence that establish, at best, only that Unisoc was aware that its chipsets might be sold in the United States and Florida. (Compl. ¶ 10; Decl. of Z. Zhang ¶¶ 1-12; Decl. of C. Clayton Ex. A.) The Plaintiff never alleges or demonstrates that Unisoc designed the chipsets for the American market or for sale in Florida in particular, and Unisoc expressly states that it does not design the chipsets at issue for the American market. (See generally Compl.; see also Decl. of C. Clayton; Decl. of Z. Zhang ¶ 12.) Although BNR alleges that Unisoc sells its products in the United States, Unisoc’s jurisdictional declaration contests that allegation. (Compare Compl. ¶ 10 (“Upon information and belief, Defendant [Unisoc] sells and offers to sell products and services throughout the United States, including in this judicial district . . . .”) with Decl. of Z. Zhang ¶ 5 (“Unisoc does not develop, design, manufacture, advertise, market, sell, import, or distribute products in the United States.”).) BNR attempts to rebut Unisoc’s declaration by offering screenshots of Unisoc’s webpage, but the screenshots actually prove Unisoc’s case: Unisoc does not offer Nokia phones with the allegedly infringing chipsets for sale on its website. (Decl. of C. Clayton Ex. A.) Instead, through a complicated commercial chain, one may eventually buy a Nokia phone in Florida (that may or may not have a Unisoc chip) through Best Buy and Walmart’s websites. (Id.) And Unisoc’s website does not even link directly to these websites; rather, it only links to Nokia’s website. (Id.) Simply put, Unisoc lacks any meaningful contacts with Florida or with the United States generally. BNR fails to rebut Unisoc’s jurisdictional evidence in its response, and Unisoc contests the only allegation that could have created a sufficient contact with Florida. (Compl. ¶ 10; Decl. of Z. Zhang ¶ 5.) There is no “plus” factor here that would meet Justice O’Connor’s test. Asahi, 480 U.S. at 113-14. The Court cannot determine any act by which Unisoc purposefully availed itself of the privilege of doing business in Florida. Id. It could, conceivably, find that Unisoc may have reasonably anticipated being haled into court in Florida if it applied Justice Brennan’s simpler test from Asahi. Id. at 121.

But that determination alone would not support a finding that personal jurisdiction may appropriately be exercised here. Ultimately, the Court need not decide which Asahi test to definitively apply here because, as it observes below, the allegations and jurisdictional evidence presented here do not meet the “fair play and substantial justice” prong of the specific personal jurisdiction analysis, just as in Asahi. Id. at 114- 15.11 The fact that the only test the Plaintiff can possibly hope to meet here is the lesser, “awareness alone is enough” Asahi test—not the more stringent “stream of commerce plus” test—bolsters the Court’s conclusion that it would not comport with due process to exercise specific personal jurisdiction over Unisoc. Id. at 113-14, 121.

Accordingly, the Court finds that BNR has failed to meet both the second (“purposeful availment”) and third (“reasonable anticipation”) prongs of the minimum contacts test. (3) Fair Play and Substantial Justice A defendant must show that personal jurisdiction offends “fair play and substantial justice” only if the plaintiff meets its burden on the two first prongs of the three-part due process test. See Louis Vuitton, 736 F. 3d at 1355. The Plaintiff fails to meet its burden, above, and Unisoc meets its burden on this last test. To establish that outcome, the Court looks to the following: “(1) the burden on the defendant; (2) the forum’s interest in adjudicating the dispute; (3) the plaintiff’s interest in obtaining convenient and effective relief; and (4) the judicial system’s interest in resolving the dispute.” Id. at 1358 (cleaned up).

First, the Court finds that litigation in Florida would be burdensome for the Defendant—a Chinese corporation that has no connection to Florida. (Compl. ¶ 10; Decl. of Z. Zhang ¶¶ 1-12.) Second, Florida’s interest in this dispute—at least, with regards to Defendant Unisoc—is minimal. While some of the other Defendants are alleged to have offices or operations in Florida and are alleged to have offered infringing products for sale in Florida, there has been no showing of the impact any specific actions in Florida by Defendant Unisoc to raise Florida’s interest beyond a generalized interest in enforcing federal law. (Decl. of Z. Zhang; Decl. of C. Clayton Ex. A.) Third, while the Plaintiffs have an interest in obtaining convenient and effective relief, that factor alone does not override the substantial burden that would be placed on Unisoc to litigate in Florida or Florida’s relatively low interest in this dispute with regards to Unisoc.

Fourth, the judicial system has an interest in resolving the dispute, as the Plaintiffs’ claims arise from federal law. But this factor is also not sufficient to tip the scales in the Plaintiff’s favor. In total, these factors weigh against the exercise of personal jurisdiction. The Court finds this to be the case based, importantly, on the Supreme Court’s unanimous holding in Asahi. There, the Supreme Court held that the exercise of personal jurisdiction would not comport with the requirements of fair play and substantial justice based on nearly identical facts to those here. 480 U.S. at 113-14, 121.12 Accordingly, the Court finds that the exercise of personal jurisdiction over Defendant Unisoc is incompatible with the Due Process Clause and the protections that it affords.

Therefore, the Court grants Unisoc’s motion to dismiss for lack of personal jurisdiction.

C. The Plaintiff is Not Entitled to Jurisdictional Discovery

Finally, the Court declines to grant BNR’s belated and improper request for jurisdictional discovery. (Resp. at 13.) BNR inserts its request at the end of its response to Unisoc’s motion, does not elaborate what documents or information it would seek through jurisdictional discovery, and never makes a separate motion to conduct jurisdictional discovery. Wolf v. Celebrity Cruises,

Inc., 683 F. App’x 786, 792 (11th Cir. 2017) (affirming district court’s denial of request for jurisdictional discovery where the plaintiff made only a “general request for jurisdictional discovery” that was “buried withing his response to [the defendant’s] motion to dismiss” and that failed “to specify what information [the plaintiff] sought or how that information would bolster his allegations.”).

Accordingly, the Court denies the Plaintiff's request.

4. Conclusion

For the reasons set out above, the Court grants Defendant Unisoc’s motion to dismiss.!³ (ECF No. 91.) The Plaintiffs claims against Defendant Unisoc are dismissed. The case shall remain open because the Plaintiff continues to assert claims against the remaining Defendants. Done and ordered at Miami, Florida, on March⁸, 2023.

{a N. Scola, Jr. United States District Judge