Context: A few months ago, we discovered two anti-antisuit injunctions (AASIs) that Access Advance licensors Dolby and Sun Patent Trust won in the Unified Patent Court’s (UPC) Munich Local Division (LD) against Roku (March 5, 2025 ip fray article). The AASIs bar the frequently-sued implementer from pursuing or enforcing antisuit injunctions (ASI) against the related infringement actions pending in the UPC. The basis on which the UPC concluded that there was a risk of Roku seeking such ASIs was a Roku lawsuit in U.S. federal court against Access Advance, Dolby and Sun Patent Trust alleging violations of the patentees’ FRAND (fair, reasonable and non-discriminatory) licensing obligations.
What’s new: Yesterday, Judge Richard G. Stearns of the United States District Court for the District of Massachusetts granted Dolby and Sun Patent Trust’s motion to dismiss Roku’s claims against them.
- There is no basis for adjudicating Roku’s declaratory judgment claims over four patents as those DJ claims “clearly do not arise from any contacts Dolby or SPT may have had with Access Advance in Massachusetts.”
- Even jurisdictional discovery, which the court granted before adjudicating the motion to dismiss, did not bring to light “any evidence of an agency relationship sufficient to pierce the corporate veil,” meaning that whatever Access Advance said in licensing negotiations with Roku could not “fairly be attributed” to Dolby and/or Sun Patent Trust as if they exercised control over Access Advance. As far as Dolby and Sun Patent Trust had licensing talks of their own with Roku, they “cannot reasonably be said to have occurred in Massachusetts (or to have somehow derived from Dolby’s or SPT’s contacts with Access Advance in Massachusetts),” which disposes of any state-specific personal jurisdiction theory even under a Massachusetts long-arm statute.
Direct impact: The docket text does not mention the word “prejudice”, but this is either formally a dismissal with prejudice or amending the complaint will be futile. It can’t be ruled out that Roku will appeal, in which case the United States Court of Appeals for the Federal Circuit will have appellate jurisdiction as patent (non-)infringement claims were raised by the complaint. In the meantime, this dismissal does not reflect favorably on, or bode well for, Roku with a view to any discussions in the UPC and other infringement fora regarding its willingness to conclude a license on FRAND terms.
Wider ramifications: We will follow up later today with an article on an announcement that Access Advance made regarding the opportunity to secure the current terms until 2030 by taking a license before the end of this year. In that context, we will also comment on the fact that Via Licensing Alliance (Via LA), like Access Advance, makes regional rates available. We wanted to keep licensing separate from the dismissal of Roku’s lawsuit, which is just a small part of the overall standard-essential patent (SEP) licensing landscape.
Implementers sometimes attempt to drag patent pool operators into litigation. When they raise FRAND defenses related to pool terms, pools may intervene, and the UPC has allowed it before (June 26, 2024 ip fray article). But so far those attempts have been unsuccessful.
Here’s the exact wording of the docket entry ordering the dismissal:
Judge Richard G. Stearns: ELECTRONIC ORDER entered granting [32] Motion to Dismiss for Lack of Jurisdiction.
The Dolby defendants and SPT move to dismiss the claims against them for lack of personal jurisdiction. For the following reasons, the court will allow the motion.
Roku, as the plaintiff, bears the burden of establishing that personal jurisdiction exists. See A Corp. v. All Am. Plumbing, Inc., 812 F.3d 54, 58 (1st Cir. 2016). To satisfy this burden, Roku relies on section 3(a) of the Massachusetts long-arm statute, which reads: “A court may exercise personal jurisdiction over a person, who acts directly or by an agent, as to a cause of action in law or equity arising from the person’s (a) transacting any business in this commonwealth.” Mass. Gen. Laws ch. 223A, § 3.
“[A] claim arises from a defendant’s transaction of business in the forum State if the claim was made possible by, or lies in the wake of, the transaction of business in the forum State.” JLB LLC v. Egger, 462 F. Supp. 3d 68, 78 (D. Mass. 2020), quoting Access Now, Inc. v. Otter Prods., LLC, 280 F. Supp. 3d 287, 291 (D. Mass. 2017). The relevant inquiry is whether “the defendant’s contacts with the Commonwealth constitute[d] the first step in a train of events that result[ed] in the… injury.” JLB LLC, 462 F. Supp. 3d at 78, quoting Access Now, 289 F. Supp. 3d at 291.
Counts I through IV (which seek a declaration of non-infringement of certain patents) and Count X (which seeks a declaration regarding Dolby’s and SPT’s alleged failure to disclose relevant patents to the ITU) clearly do not arise from any contacts Dolby or SPT may have had with Access Advance in Massachusetts. Roku maintains, however, that Counts V, VI, VIII, and IX (which assert that Dolby and SPT failed to offer FRAND terms to Roku for a license to their SEPs) arise from these contacts because the claims “relate to Dolby, SPT, and AA’s joint endeavors to license, enforce, and monetize patents in Massachusetts” and “the collaboration between Dolby, SPT, and AA to coerce acceptance of supra-FRAND terms to a patent pool administered in Massachusetts.” Pl.’s Opp’n [Dkt # 41] at 7; see also Pl.’s Supp. Br. [Dkt # 49] at 9.
The court is not convinced. Jurisdictional discovery has not uncovered any evidence of an agency relationship sufficient to pierce the corporate veil. Nor has it revealed any evidence that Dolby or SPT exercised control over any licensing negotiations with Roku or determined which terms Access Advance offered to Roku, such that Access Advance’s actions during licensing negotiations can nonetheless fairly be attributed to either entity. Counts V, VI, VIII, and IX thus are only viable to the extent they are premised on the conduct of Dolby and SPT during their own licensing negotiations with Roku. As the actions of Dolby and SPT in these licensing negotiations cannot reasonably be said to have occurred in Massachusetts (or to have somehow derived from Dolby’s or SPT’s contacts with Access Advance in Massachusetts), personal jurisdiction is lacking. (RGS, law3)