In an order dated February 4, 2015, the Honorable George A. O’Toole, Jr. effectively ended Woburn-based Skyworks Solutions, Inc.’s effort to enforce patent rights against manufacturers of LED driver products used in cellphones. Skyworks’ amended complaint, filed in October 2013, accused California-based Kinetic Technologies, Inc. and Hong Kong-based Kinetic Technologies HK Limited (“Kinetic HK”) of infringing U.S. Patent Nos. 8,539,275 and 7,921,320, both titled, “Single Wire Serial Interface.” At issue were various LED components integrated into cellphones marketed and sold in Massachusetts by Samsung. Noting that Kinetic Technologies, Inc. was previously dismissed from the case for lack of personal jurisdiction in December 2013, the Court determined that Skyworks failed to show that Kinetic HK was subject to personal jurisdiction in Massachusetts under either the Massachusetts Long Arm Statute, M.G.L. ch. 233A §3, or due process.
The Court noted that although Samsung sells phones containing the allegedly infringing LED components in Massachusetts, Kinetic HK owns no property in Massachusetts, has no employees in Massachusetts, and has never done or solicited any business in Massachusetts. Rather, Kinetic HK sells the subject microchips to Samsung in South Korea and thereafter ends its contact with the products.
Notably, the Court emphasized that even though Kinetic HK’s LED microchips may be integrated into cellphones sold in Massachusetts, Kinetic HK was not subject to personal jurisdiction because of its lack of ties to the Commonwealth, and because Skyworks failed to show that Kinetic HK derives substantial revenue from the devices – which it sells to Samsung for sixteen cents each. The Court thus dismissed the action against Kinetic HK and also denied Skyworks’ motion for leave to file an amended complaint in light of the jurisdictional issue.
Patent holders considering infringement claims in Massachusetts against component-parts manufacturers may find the dismissal instructive and would be prudent to fully consider the defendant company’s ties to the state, or how to show significant revenue from sales in the state, before filing, lest their claims face the same fate as Skyworks’.
The case is Skyworks Solutions, Inc. v. Kinetic Technologies, Inc. et al, Case No. 13-CV-10655, in the U.S. District Court for the District of Massachusetts. The Court’s opinion can be found here.