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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`Richmond Division
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`AMAZON WEB SERVICES, INC.
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`and
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`VADATA, INC.,
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`Plaintiffs,
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`V.
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`Civil Action No. 3:16cv6I9
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`GLOBAL EQUITY MANAGEMENT, S.A.,
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`Defendant.
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`MEMORANDUM OPINION
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`This matter comes before the Court on five motions:
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`(1) Defendant Global Equity
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`Management, S.A.'s ("GEMSA") "Rule 12(b)(5)^^^ Motion to Quash Insufficient Service of
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`Process" (the "Motion to Quash"), (ECF No. 18); (2) GEMSA's "Rule 12(b)(2)P' Motion to
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`Dismiss for Lack of Personal Jurisdiction" (the "Motion to Dismiss"), (ECF No. 20); (3)
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`Plaintiffs Amazon Web Services, Inc. and VADATA, Inc.'s (collectively, the "Amazon
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`Plaintiffs") "Motion to Enjoin [GEMSA] From Litigating More Than 30 Collateral Identical
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`Customer Suits in the Eastern District of Texas" (the "Motion to Enjoin"), (ECF No. 25);
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`(4) GEMSA's "Motion to Strike or Stay [the Amazon Plaintiffs'] Motion to Enjoin" (the
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`"Motion to Strike"), (ECF No. 27); and, (5) GEMSA's "Opposed Motion to Withdraw as
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`Counsel" (the "Motion to Withdraw"), (ECF No. 35).
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`' Federal Rule of Civil Procedure 12(b)(5) allows dismissal for "insufficient service of
`process." Fed. R. Civ. P. 12(b)(5).
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`^Federal Rule of Civil Procedure 12(b)(2) allows dismissal for "lack of personal
`jurisdiction." Fed. R. Civ. P. 12(b)(2).
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`

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`The matters are ripe for disposition. The Court dispenses with oral argument because the
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`materials before it adequately present the facts and legal contentions, and argument would not
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`aid the decisional process. For the reasons that follow, the Court will: (1) deny the Motion to
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`Quash and the Motion to Dismiss; (2) deny the Motion to Enjoin and the Motion to Strike as
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`moot; and, (3) grant the Motion to Withdraw subject to the conditions stated in this
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`Memorandum Opinion.3
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`1. Procedural and Factual Background
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`The Amazon Plaintiffs bring this case seeking a declaratory judgment of non-
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`infringement and invalidity of two patents purportedly assigned to and owned by GEMSA:
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`United States Patent Numbers 6,690,400 (the “‘400 patent”) and 7,356,677 (the “‘677 patent”)
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`(collectively, the “GEMSA Patents”).
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`In light of GEMSA’s status as a patentee not residing in the United States, and pursuant
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`to 35 U.S.C. § 293,4 the Amazon Plaintiffs requested permission to serve GEMSA by alternative
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`means. (ECF No. 10.) The Court granted that request on the following basis:
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`According to records filed with the Patent and Trademark Office, GEMSA is an
`Australian corporation with a principal place of business at 458 Morphett Road,
`Warradale, South Australia 5046.
`(Mem. Supp. Mot. Ex. A, Patent Assignment
`Abstract of Title for the ‘400 Patent at 1, ECF No. 11-3; Mem. Supp. Mot. Ex. B,
`Patent Assignment Abstract of Title for the ‘677 Patent at l, ECF No. 11-4.)
`Additionally,
`the Amazon Plaintiffs indicate that
`the file wrappers for the
`GEMSA Patents do not reflect that GEMSA has designated with the Patent and
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`3 The Court will also grant GEMSA’s “Motion to Withdraw [GEMSA’s] Opposed
`Motion to Withdraw as Counsel,” (ECF No. 34), and deny as moot the June 16, 2017 “Opposed
`Motion to Withdraw as Counsel,” (ECF No. 33).
`
`4 Under § 293, “[e]very patentee not residing in the United States may file in the Patent
`and Trademark Office a written designation stating the name and address of a person residing
`within the United States on whom may be served process or notice of proceedings affecting the
`patent or rights thereunder.” 35 U.S.C. § 293. If no person on whom process may be served has
`been designated in the Patent and Trademark Office, “the United States District Court for the
`Eastern District of Virginia shall have jurisdiction and summons shall be served by publication or
`otherwise as the court directs.” Id.
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`

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`Trademark Office a person on whom process may be served.
`Supp. Mot. 2—3, ECF No. 11.)
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`(See Pls.’ Mem.
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`(Mem. 0. 2, ECF No. 16.) The Court allowed the Amazon Plaintiffs to serve process by two
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`means: (1) “[p]ublication in a newspaper of general circulation, such as The New York Times or
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`The Washington Post”; and, (2) “[p]ersonal service on GEMSA’s United States Patent and
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`Trademark correspondence address: William P. Ramey III of the law firms of Ramey &
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`Browning, PLLC and/or Ramey & Schwaller, LLP, 5020 Montrose Boulevard, Suite 750,
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`Houston, Texas 77006.” (Id) One week after the Court’s order, the Amazon Plaintiffs filed
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`proof of service by attaching a summons served on Mr. Ramey, (ECF No. 17), and a copy of The
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`Washington Post’s classified section dated Thursday, August 18, 2016, (ECF No. 17-1).
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`GEMSA then filed two motions simultaneously:
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`the Motion to Quash and the Motion to
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`Dismiss. The Motion to Quash seeks to quash the attempted service of process on GEMSA
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`because it failed to “comply with Due Process requirements.” (Mot. Quash 1.) The Motion to
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`Dismiss seeks to dismiss the case against GEMSA because “GEMSA did not initiate the patent
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`application process in [the Eastern District of Virginia], has no relevant contacts to [the Eastern
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`District of Virginia,] and has already subjected itself to personal jurisdiction in [the United States
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`District Court for the Eastern District of Texas] .” (Mem. Supp. Mot. Dismiss 2, ECF No. 21.)
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`The Amazon Plaintiffs responded to both motions in one response, (ECF No. 24), and GEMSA
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`did not reply. The time to reply has expired.
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`Before the Court ruled on the Motion to Quash and the Motion to Dismiss, the Amazon
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`Plaintiffs filed the Motion to Enjoin, and GEMSA responded via the Motion to Strike. The
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`Motion to Enjoin, which is now moot, sought a ruling from this Court enjoining GEMSA from
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`litigating more than 30 collateral suits in the United States District Court for the Eastern District
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`of Texas. GEMSA sought to strike the Motion to Enjoin pending resolution of the Motion to
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`Quash and the Motion to Dismiss. Before the Court ruled on the Motion to Enjoin and the
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`Motion to Strike, the United States District Court for the Eastern District of Texas transferred
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`GEMSA’s claims against the Amazon Plaintiffs to this Court. (See Global Equity Management,
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`SA. v. Amazon Web Services, Inc, et al., 3:17cv81.)5 Accordingly, the Court will deny both the
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`Motion to Enj oin and the Motion to Strike as moot.
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`GEMSA then filed the Motion to Withdraw, “reqest[ing] that William P. Ramey, III,
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`Martin Conn and Matthias Kaseorg, and the law firms of Ramey & Schwaller, LLP and Moran
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`Reeves & Conn PC, be permitted to withdraw as counsel of record for GEMSA.” (Mot.
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`Withdraw 1.) The Amazon Plaintiffs oppose the Motion to Withdraw “[o]ut of an abundance of
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`caution .
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`.
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`. because it is uncertain whether by granting [the Motion to Withdraw], the Court may
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`divest itself ofjurisdiction over former counsel with respect to ordering sanctions for pre-
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`withdrawal misconduct.” (Opp’n Mot. Withdraw 2, ECF No. 36.) GEMSA filed a reply,
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`refuting the Amazon Plaintiffs’ argument and stating that the Court could permit withdrawal
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`while ordering GEMSA to hire substitute counsel. The Court addresses these pending motions,
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`seriatim, below.
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`II. Anal sis: Motion to
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`uash
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`GEMSA’s Motion to Quash advances one argument:
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`that, by serving process in the
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`manner approved by this Court and under 35 U.S.C. § 293, the Amazon Plaintiffs failed to
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`comply with the due process requirements of the Fifth Amendment to the United States
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`Constitution.6 Specifically, GEMSA argues that, by attempting service by publication in a
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`5 GEMSA’s counsel similarly filed a motion seeking to withdraw their appearances in
`that transferred case, which is also pending before this court. The Court will address that motion
`by a separate order in that case.
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`6 “No person shall be deprived of life, liberty, or property, without due process of law.”
`U.S. Const. amend. V.
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`

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`newspaper of general circulation and by serving GEMSA’s outside counsel, the Amazon
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`Plaintiffs served process in the manner most convenient to them, while neglecting to serve
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`process in the manner most likely to reach GEMSA. Although GEMSA essentially concedes
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`that the Amazon Plaintiffs complied with 35 U.S.C. § 293,7 GEMSA argues that doing so fails to
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`satisfy due process. In essence, GEMSA challenges the constitutionality of the effectuated
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`service. GEMSA’S argument fails.
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`A.
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`Federal Rule of Civil Procedure 121b1151 in Patent Cases
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`Federal Rule of Civil Procedure 12(b)(5)8 permits a defendant to challenge the method of
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`service attempted by the plaintiff.9 In patent infringement cases, federal law provides for two
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`methods of service. See Nutrition Physiology Corp. v. Enviros Ltd., 87 F. Supp. 2d 648, 652
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`(N.D. Tex. 2000). First, the plaintiff may serve non-resident defendants who maintain a regular
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`7 GEMSA does not appear to dispute that the Amazon Plaintiffs complied with 35 U.S.C.
`§ 293. (Mem. Supp. Mot. Quash 3 (“While that service arguably may have complied with
`35 U.S.C. § 293, it did not comply with Due Process’s requirement that the most likely method
`of reaching the defendant .
`.
`. was used for service.”).)
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`8 GEMSA asks that the Court quash the Amazon Plaintiffs’ allegedly insufficient service
`of process. Unlike most Rule 12 defenses, Rule 12(b)(5) allows defendants to seek two courses
`of action: dismissal and quashing of process. “[T]he difference between the two results is not
`substantial.” 5C Charles A. Wright & Arthur R. Miller, Federal Practice and Procedure § 1354
`(3d ed.). First, “[i]n the case of a dismissal, the plaintiff merely reinstitutes the action and has
`process served again, making sure that the earlier defect in the summons or the mode of service
`has been corrected.” Id. On the other hand, “[w]hen process is quashed, only the service need
`be repeated.” Id.
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`9 The Court sees it appropriate to distinguish the Rule 12(b)(5) motion asserted by
`GEMSA from motions to dismiss brought under Federal Rule of Civil Procedure 12(b)(4).
`A Rule 12(b)(4) challenge concerns theform ofthe process rather than the manner or method of
`service. Thus, Rule 12(b)(4) motions challenge noncompliance with Federal Rule of Civil
`Procedure 4(b), while Rule 12(b)(5) motions—like GEMSA’s argument here—challenge the
`mode of delivery or the lack of delivery of the summons and complaint.
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`

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`and established place of business in accordance with 28 U.S.C. § 1694.‘0 Second, the plaintiff
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`may serve non-resident patentees in suits relating to that patent or the rights thereunder pursuant
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`to 35 U.S.C. § 293. This case involves service under § 293.
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`B.
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`The Amazon Plaintiffs’ Service Complied With
`35 U.S.C. § 293 and this Court’s Order
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`The Amazon Plaintiffs complied with 35 U.S.C. § 293 and this Court’s order when
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`serving GEMSA: (1) by publication; and, (2) through GEMSA’S outside counsel. Section 293
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`provides that if an alien patentee does not designate, through a submission to the United States
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`Patent and Trademark Office (“USPTO”), an agent for service of process, “the United States
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`District Court for the Eastern District of Virginia shall have jurisdiction and summons shall be
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`served by publication or otherwise as the court directs.” 35 U.S.C. §293 (emphasis added).
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`Here, GEMSA is a non-resident that has not designated a domestic agent for service of
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`process through the USPTO. Thus, the Amazon Plaintiffs correctly looked to § 293 for guidance
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`on how to serve process. In accordance with § 293, the Amazon Plaintiffs served GEMSA by
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`publication; and, as ordered by this Court under the authority provided to it in § 293, the Amazon
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`Plaintiffs served process on GEMSA’s counsel. Accordingly, the Amazon Plaintiffs complied
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`with § 293.
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`C.
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`The Amazon Plaintiffs’ Service of Process Did Not Violate the Constitution
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`Because the Amazon Plaintiffs complied with § 293, GEMSA’s argument turns on the
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`constitutionality of the service of process. The Court finds the Amazon Plaintiffs’ service of
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`process fell well within constitutional bounds.
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`'0 “In a patent infringement action commenced in a district where the defendant is not a
`resident but has a regular and established place of business, service of process, summons or
`subpoena upon such defendant may be made upon his agent or agents conducting such business.”
`28 U.S.C. § 1694.
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`

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`GEMSA tersely argues that due process requires “that the most likely method of reaching
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`the defendant (i. e. , serving the defendant itself, rather than others close to the defendant) [be]
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`used for service.” (Mem. Supp. Mot. Quash 3, ECF No. 19.) GEMSA cites no authority in the
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`context of § 293 in support of this argument. In fact, GEMSA omits any authority at all
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`regarding the constitutionality of serving process under § 293, and the Court sees none.
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`Instead, GEMSA relies on McDonald v. Mabee, 243 US. 90, 92 (1917), for the premise
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`that a plaintiff may use substitute service only if the plaintiff attempts service in the manner most
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`likely to reach the defendant.'1 The standard articulated in that 1917 decision has been updated.
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`'1 GEMSA relies on McDonald for the following cherry-picked premise: “To dispense
`with personal service the substitute that is most likely to reach the defendant is the least that
`ought to be required if substantial justice is to be done.” 243 US. at 92.
`In McDonald, the plaintiff brought suit in Texas, where, prior to the lawsuit, the
`defendant had been domiciled. Id at 91. The defendant eventually established his domicile in
`Missouri, and after his departure from Texas, the plaintiff only served him by publication in a
`newspaper once a week for four successive weeks. Id. While never explicitly stated, a
`reasonable reading of the opinion suggests that the plaintiff published service in a Texas
`newspaper. Id. The defendant, in turn, never appeared in the suit. Id. The Supreme Court of
`Texas held that such service satisfied Texas law and overruled the defendant’s contention that
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`the judgment denied him the constitutional right to due process of law. Id. The Supreme Court
`of the United States disagreed, explaining that “[t]here is no dispute that service by publication
`does not warrant a personal judgment against a nonresident.” Id. at 92 (citing Pennoyer v. Nefl,
`95 US. 714 (1877)). Writing on the “precise facts” of the case, Justice Holmes expressed
`disquietude about whether publication sufficiently notified an itinerant defendant of the existence
`of the case:
`
`Some language of Pennoyer v. Neff would justify the extension of the same
`principle to absent parties, but we shall go no farther than the precise facts of this
`case require. When the former suit was begun,
`[the defendant], although
`technically domiciled in Texas, had left the state, intending to establish his home
`elsewhere. Perhaps in view of his technical position and the actual presence of
`his family in [Texas], a summons left at his last and usual place of abode would
`have been enough. But it appears to us that an advertisement in a local newspaper
`is not sufficient notice to bind a person who has left a state, intending not to
`return.
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`Id. Not only does this fact-bound determination not pertain here, but more recent Supreme Court
`case law that has clarified the contours of due process in the service-of—process context.
`McDonald does not control.
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`

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`Subsequent Supreme Court case law explains that service satisfies due process when it provides
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`“notice reasonably calculated, under all the circumstances, to apprise interested parties of the
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`pendency of the action and afford them an opportunity to present their objections.” Mullane v.
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`Cent. Hanover Bank & Trust Co, 339 US. 306, 314 (1950); see also Snider Int ’1 Corp. v. Town
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`ofForest Heights, Mal, 739 F.3d 140, 146 (4th Cir. 2014) (citing Mullane, 339 US. at 314—15).
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`Due process does not require actual notice, and notice will suffice if it is either: (1) “reasonably
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`certain to inform those affected”; or, (2) “not substantially less likely to bring home notice than
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`other of the feasible and customary substitutes.” Id. at 315.
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`Here, the Amazon Plaintiffs’ service provided notice reasonably certain to apprise
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`GEMSA of the claims against it. Indeed, by publishing notice in The Washington Post and by
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`serving process on GEMSA’s outside counse
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`1,12 the Amazon Plaintiffs took action that was
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`reasonably certain to (and which did) inform GEMSA of the case. Whether a different method—
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`i. e. , service on GEMSA in Australia—would have been feasible does not diminish the
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`constitutionality of the actions taken by the Amazon Plaintiffs. The Court will deny the Motion
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`to Quash.
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`111. Analysis: Motion to Dismiss
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`Relatedly, GEMSA’s Motion to Dismiss challenges personal jurisdiction on due process
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`grounds. In a two-page argument with few citations to authority, GEMSA argues that “this
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`Court lacks personal jurisdiction over this lawsuit [because] GEMSA did not initiate the patent
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`application process in this District, has no relevant contacts in this District[,] and has already
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`'2 GEMSA relies on Davies v. Jobs & Adverts Online, Gmbh, 94 F. Supp. 2d 719, 722
`(ED. Va. 2000), for the premise that serving one’s attorney does not, by itself, constitute
`sufficient service of process. The Court need not address the applicability of Davies here
`because the Amazon Plaintiffs did not attempt to serve process by only serving GEMSA’s
`counsel. Publication and service on GEMSA’s counsel undergird the Court’s finding that
`Amazon adequately served GEMSA.
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`

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`subjected itself to personal jurisdiction in a different US. Court.” (Mem. Supp. Mot. Dismiss 1,
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`ECF No. 21.) GEMSA’s Motion to Dismiss fails because GEMSA purposefially availed itself of
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`the privileges of patent ownership through its contacts with the USPTO in the Eastern District of
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`Virginia.
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`A.
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`The Court Could Find that GEMSA Waived Any Challenge to Personal
`Jurisdiction By Filing the Motion to Quash First and Separately
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`As a preliminary matter, because GEMSA filed the Motion to Quash first and, in a
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`separate filing, its personal jurisdiction challenge, the Court—technically—could rule that
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`GEMSA waived the latter arguments. See 5C Charles A. Wright & Arthur R. Miller, Federal
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`Practice and Procedure § 1361 (3d ed.) (“According to Rule 12(g), once a party has chosen to
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`make a Rule 12(b) motion, any available Rule 12(b) defenses must be joined in that motion or
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`those that are omitted will be waived”). Federal Rule of Civil Procedure 12(g)(2) requires that a
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`defendant make all challenges under Rule 12 in the same motion. See Fed. R. Civ. P. 12(g)(2)
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`(“Except as provided in Rule 12(h)(2) or (3 ),['3] a party that makes a motion under this rule must
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`not make another motion under this rule raising a defense or objection that was available to the
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`party but omitted from its earlier motion”). Rule 12(h)(1)(A) states: “A party waives any
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`defense listed in Rule 12(b)(2)-(5) by .
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`.
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`. omitting it from a motion in the circumstances
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`described in Rule 12(g)(2).” Fed. R. Civ. P. 12(h)(1)(A).
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`But GEMSA filed both Rule 12 motions on the same day, meaning that GEMSA’s failure
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`to comply with Rule 12 did not create unnecessary delay at the pleading stage, which Rule 12(g)
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`'3 Rule 12(h)(2) permits, in limited circumstances, the filing of failure to state a claim
`upon which relief can be granted, to join a person required by Rule 19(b), or to state a legal
`defense to a claim may be raised. Rule 12(h)(3) allows a defendant to file a motion to dismiss
`for lack of subj ect-matter jurisdiction at any time.
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`aims to prevent. '4 Accordingly, although procedurally improper, the Court will not deny the
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`Motion to Dismiss for failure to comply with Rule 12(g)(2).
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`B.
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`This Court Has Personal Jurisdiction Over GEMSA
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`Most importantly, GEMSA’s Motion to Dismiss fails substantively. This Court has
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`jurisdiction over GEMSA because GEMSA purposefiilly availed itself of the privileges of patent
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`ownership through its contacts with the USPTO in the Eastern District of Virginia. Accordingly,
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`the Court will deny the Motion to Dismiss.
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`1.
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`Personal Jurisdiction in Patent Cases
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`Federal Circuit law governs personal jurisdiction in patent cases because “the
`1”
`jurisdictional issue is ‘intimately involved with the substance of the patent laws. Avocent
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`Huntsville Corp. v. Aten Int ’1 Co., 552 F.3d 1324, 1328 (Fed. Cir. 2008) (quoting Akro Corp. v.
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`Luker, 45 F.3d 1541, 1543 (Fed. Cir. 1995)).
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`a.
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`The Amazon Plaintiffs Bear the Burden of
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`Proving Personal Jurisdiction
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`On a motion to dismiss pursuant to Federal Rule of Civil Procedure 12(b)(2), “the
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`9
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`plaintiff bears the burden of proof as to whether the defendant is subject to personal jurisdiction.’
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`‘4 In Federal Practice and Procedure, Wright & Miller describe the purpose of Rule
`12(g) as follows:
`
`Subdivision (g) contemplates the presentation of an omnibus pre-answer motion
`in which the defendant advances every available Rule 12 defense and objection he
`may have that is assertable by motion. The defendant cannot delay the filing of a
`responsive pleading by interposing these defenses and objections in piecemeal
`fashion, but must present them simultaneously. Any defense that is available at
`the time of the original motion, but is not included, may not be the basis of a
`second pre-answer motion.
`
`5C Charles A. Wright & Arthur R. Miller, Federal Practice and Procedure § 1384 (3d ed.)
`In any event, GEMSA submitted its second Rule 12 motion before the Court ruled on the
`first Rule 12(b) motion, so GEMSA “could have simply moved to consolidate its arguments.”
`Jetform Corp. v. Unisys Corp, 11 F. Supp. 2d 788, 791 (ED. Va. 1998) (considering second
`Rule 12 motion because defendant filed it before the court ruled on the first Rule 12 motion).
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`10
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`Synthes (U.S.A.) v. GM. Dos Reis Jr. Ind. Com. De Equip. Medico, 563 F.3d 1285, 1294
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`(Fed. Cir. 2009). Where the parties have not yet conducted discovery and the court does not
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`conduct an evidentiary hearing, “the plaintiff need[s] ‘only to make a prima facie showing’ that
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`the defendants [are] subject to personaljurisdiction.” Silent Drive, Inc. v. Strong Indus, Inc,
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`326 F.3d 1194, 1201 (Fed. Cir. 2003). The Court “must accept the uncontroverted allegations in
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`the plaintiff’s complaint as true and resolve any factual conflicts in the affidavits in the plaintiff’s
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`favor.” Elecs. for Imaging, Inc. v. Coyle, 340 F.3d 1344, 1349 (Fed. Cir. 2003). The burden of
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`proof then “shifts to the defendant, which must ‘present a compelling case that the presence of
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`3”
`some other considerations would render jurisdiction unreasonable. Breckenridge Pharm, Inc.
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`v. Metabolite Labs, Inc, 444 F.3d 1356, 1362 (Fed. Cir. 2006) (quoting Burger King Corp. v.
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`Rudzewicz, 471 US. 462, 476—77 (1985)).
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`b.
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`Personal Jurisdiction Standardl5
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`“‘Personal jurisdiction’ is the phrase used to express a court’s power to bring a person
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`into its adjudicative process.” Noble Sec., Inc. v. MIZ Eng ’g, Ltd, 611 F. Supp. 2d 513, 525
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`(ED. Va. 2009) (citation omitted). “Federal district courts may exercise such personal
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`'5 Because the Amazon Plaintiffs seek to establish personal jurisdiction under the
`purported long-arm statute of § 293, the Court’s personal jurisdiction standard omits reference to
`Federal Rule of Civil Procedure 4(k), which typically serves as the starting point for a personal
`jurisdiction analysis.
`Rule 4(k)(1)(A) states that service of process establishes jurisdiction over a defendant
`“who is subject to the jurisdiction of a court of general jurisdiction in the state where the district
`court is located.” Fed. R. Civ. P. 4(k)(1)(A).» Pursuant to Rule 4(k)(1)(A), a federal court
`addressing personal jurisdiction over a defendant approaches such an inquiry by analyzing the
`long-arm statute and governing principles of the forum state. See id.; see also CFA Inst. v. Inst.
`ofChartered Fin. Analysts ofIndia, 551 F.3d 285, 292 (4th Cir. 2009) (“[A] federal court
`assessing such a jurisdictional issue borrows and applies the applicable long-arm statute and
`governing principles from the forum state”).
`Rule 4(k)(2), on the other hand, establishes jurisdiction over a defendant when process
`has been served and three requirements are met: “(1) the plaintiffs claim arises under federal
`law, (2) the defendant is not subject to jurisdiction in any state's courts of general jurisdiction,
`and (3) the exercise ofjurisdiction comports with due process.” Synthes, 563 F.3d at 1294.
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`jurisdiction ‘only to the degree authorized by Congress under its constitutional power to ordain
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`and establish the lower federal courts.’” Id. (quoting ESAB Grp., Inc. v. Centricut, Inc., 126 F.3d
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`617, 622 (4th Cir. 1997)). The personal jurisdiction question is resolved by a two-step inquiry:
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`(i) “the district court determines whether a provision makes the defendant amenable to process”;
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`and, (ii) “the district court ensures that maintenance of the suit does not offend .
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`.
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`. the due
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`process clause.” Red Wing Shoe Co. v. Hockerson-Halberstadt, Inc., 148 F.3d 1355, 1358 (Fed.
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`Cir. 1998) (internal quotations omitted).
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`The “test for determining whether the exercise ofjurisdiction comports with due process”
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`is determined by the following “three-pronged approach” emanating from the Supreme Court’s
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`decision in International Shoe Co. v. Washington, 326 US. 310 (1945). See Touchcom, Inc. v.
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`Bereskin & Parr, 574 F.3d 1403, 141 1 (Fed. Cir. 2009). “First, the defendant must have
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`‘minimum contacts’ with the forum state,” which, in the “context of specific jurisdiction,” means
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`that “the defendant has ‘purposefiilly directed his activities at residents of the forum)” Id.
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`(quoting Synthes, 563 F.3d at 1297). Second, the claim must “‘arise[] out of or relate[] to the
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`defendant’s activities with the forum.’” Id. And third, the “‘assertion ofjurisdiction’” must be
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`reasonable and fair.”’ Id.
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`2.
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`GEMSA Purposefully Availed Itself of the Eastern District
`of Virginia By Owning a Patent Registered With the USPTO
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`No doubt exists that the Court has personal jurisdiction over GEMSA because GEMSA
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`owns a patent registered with the USPTO. GEMSA sought and has the privileges and
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`protections of patent ownership. GEMSA does not dispute that § 293 allows personal
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`jurisdiction over non-resident defendants, nor should it. The United States Court of Appeals for
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`the Federal Circuit has made clear that “[§] 293 is a special long-arm statute that requires
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`patentees residing outside the United States either to designate an agent residing somewhere
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`within the United States for service of process or to submit to jurisdiction in the United States
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`District Courtfor the [Eastern District of Virginia].” Deprenyl Animal Health, Inc. v. Univ. of
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`Toronto Innovations Found, 297 F.3d 1343, 1353 (Fed. Cir. 2002) (emphasis added).16 The
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`Deprenyl court explained:
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`Although § 293 does not directly authorize the exercise of jurisdiction over
`[GEMSA], the statute represents an important Congressional judgment that in
`exchange for obtaining the benefits of a United States patent, it is appropriate to
`require foreign patentees to submit to broader jurisdiction in United States Federal
`Court than that to which they would otherwise be subject. Japan Gas Lighter
`Ass ’n v. Ronson Corp, 257 F. Supp. 219, 228 (D.N.J. 1966) (Section 293 was
`“designed to assist a plaintiff by producing an alternative avenue to obtain
`personal
`jurisdiction and service where it would otherwise be difficult or
`impossible”).
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`Id. Accordingly, as a “special long-arm statute,” § 293 confers on this Court jurisdiction over
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`GEMSA.
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`GEMSA, however, argues that this Court’s exercise of personal jurisdiction still must
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`comport with due process. Although true, GEMSA’s conclusory argument that the exercise of
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`personal jurisdiction here would violate due process borders on frivolous. Federal courts long
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`have held that, in the § 293 context, registering a patent alone satisfies the constitutional
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`inquiry.l7 “By registering a patent in the [USPTO], a party residing abroad purposefully avails
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`'6 The quote in Deprenyl Animal Health listed the United States District Court for the
`District of Columbia—instead of this District—because § 293 previously vested jurisdiction
`there.
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`'7 Outside the § 293 context, the Court might find otherwise. In Touchcom, a legal
`malpractice case, the Federal Circuit declined to find that the defendants purposefully availed
`themselves of Virginia because the alleged contacts were “limited to the filing of a patent
`application at the USPTO and subsequent communications and filings made in connection with
`that application.” 574 F.3d at 1412. The appellate court explained:
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`In this case, appellees’ contacts with Virginia are limited to the filing of a patent
`application at the USPTO and subsequent communications and filings made in
`connection with that application. Appellees never
`traveled to Virginia in
`connection with this patent and thus have not contributed to or benefited from
`
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`itself of the benefits and protections patent registration in this country affords.” Nat'l Patent
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`Dev. Corp. v. T.J. Smith & Nephew Ltd, 877 F.2d 1003, 1009 (DC. Cir. 1989). “It is therefore
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`fair and reasonable to require such a party to respond here—i. e. , in federal court in [this District],
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`where the party has registered its patents—in proceedings, whether arising under federal or state
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`law, concerning the U.S.-registered patent.”18 Id. at 1009—10. GEMSA offers no authority to
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`the contrary, and the Court finds National Patent Development Corp. applicable here.‘9 The
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`Court will deny the Motion to Dismiss.
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`Virginia’s restaurants, hotels, airports, or other commercial establishments in its
`prosecution of the patent. Appellees have not directed any of their activities at
`issue in this case towards residents of Virginia, nor have they engaged in business
`negotiations with any Virginia residents. Appellees’ contacts are limited to long-
`distance communications with a federal agency that happens to be located in
`Virginia primarily because of the state’s proximity to our nation’s capital. While
`appellees made such contacts purposefully, and thus those contacts are neither
`random nor fortuitous, see hi, the contacts do not indicate a purposeful availmem‘
`of the ‘privilege of conducting business within” Virginia. Finally,
`they have
`engaged in no conduct in Virginia that concerns the interests of Virginia, such as
`protecting its citizens, businesses, or property. For purposes of this lawsuit,
`appellees do not therefore possess the constitutional “minimum contacts” with
`Virginia, Hanson [v. Denckla],357 US. [235,] 253 [(1958)] are not subject to
`jur