Lenovo Inc. v. IPCom GmbH & Co., KG

Background

Lenovo and Motorola Mobility, LLC, collectively referred to as Lenovo, asserted claims against IPCom based on alleged failures to offer licenses to certain declared standard-essential patents on fair, reasonable, and nondiscriminatory terms. Lenovo also relied on an antitrust claim and claims seeking declarations that it did not infringe two IPCom patents.

IPCom moved to dismiss for lack of personal jurisdiction. Judge Edward J. Davila concluded that Lenovo had not made the initial showing required to establish specific personal jurisdiction over IPCom. He allowed limited jurisdictional discovery, stayed other discovery, directed the parties to confer about its scope, and referred discovery disputes to Magistrate Judge Virginia K. DeMarchi.

Discovery dispute

Lenovo proposed 11 categories of document requests. They sought, among other things, documents about IPCom’s United States patent activities, business plans, licensing and enforcement communications, United States licensees, revenues, agents and employees, travel, FRAND obligations, and communications involving Lenovo or Motorola. IPCom agreed to produce documents responsive to portions of Requests 1, 3, 7, and 10, but objected to the remaining requests.

The court explained that jurisdictional discovery had to be relevant to whether the court could exercise specific personal jurisdiction over IPCom and proportionate to that issue under Federal Rule of Civil Procedure 26(b)(1). It concluded that most of Lenovo’s requests were too broad and appeared directed toward general jurisdiction or the merits of the case rather than specific jurisdiction.

Guidelines

The court instructed that Lenovo could seek discovery about matters IPCom had specifically placed at issue concerning its contacts with the United States, including factual assertions in a declaration supporting IPCom’s opposition to dismissal. Lenovo could not seek discovery about IPCom’s conduct after the complaint was filed, because the jurisdictional inquiry concerned the period before filing and the conduct giving rise to the claims.

The court also stated that personal jurisdiction could not be based on conduct by Lenovo or third parties in the United States. Accordingly, discovery about revenue IPCom received from third parties’ sales in the United States was not relevant merely because those sales occurred there.

For the antitrust claim, discovery could address whether the two intentional acts identified in Judge Davila’s order—the allegedly false declarations concerning FRAND licensing and the alleged demand for above-market royalties from Lenovo—were expressly aimed at the United States. Lenovo could not use this discovery to investigate other alleged intentional acts, such as royalty demands directed at other companies.

For the patent non-infringement claims, discovery could address IPCom’s United States-related activities concerning the two patents at issue. It could include documents concerning other patents if they reflected relevant United States-related activities, but could not include documents that merely referred generally to United States patents or standard-essential patents without making clear that one of the two patents at issue was covered.

The court did not bar discovery concerning the fairness part of the jurisdictional inquiry, but expected Lenovo to focus on evidence needed to establish IPCom’s relevant minimum contacts with the United States.

Disposition

The court concluded that Lenovo’s proposed discovery exceeded the permitted scope. It required Lenovo to narrow the requests and required the parties to confer further. The guidelines generally did not resolve the parties’ dispute over particular requests or comprehensively define the limits of permissible discovery. The order was without prejudice to submission of another joint discovery-dispute letter after the parties followed the court’s directions. The court also requested a brief status report about jurisdictional discovery by February 28, 2020. The order was signed by Judge Virginia K. DeMarchi.