IN THE UNITED STATES DISTRICT COURT 

FOR THE EASTERN DISTRICT OF TEXAS

MARSHALL DIVISION

SYMBOLOGY INNOVATIONS, LLC,

Plaintiff,

v.

ROCHE DIAGNOSTICS GMBH LTD.,

Defendant.

Case No. 2:23-cv-00630-JRG-RSP

PATENT CASE

JURY TRIAL DEMANDED

DEFENDANT ROCHE DIAGNOSTICS GMBH LTD.’S MOTION TO DISMISS FOR 

LACK OF PERSONAL JURISDICTION AND FAILURE TO STATE A CLAIM

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i

TABLE OF CONTENTS

I. STATEMENT OF THE ISSUES........................................................................................... 1

II. STATEMENT OF FACTS .................................................................................................... 2

III. LEGAL STANDARD............................................................................................................ 3

A. Personal Jurisdiction ..............................................................................................3

B. Failure to State a Claim..........................................................................................6

IV. ARGUMENT......................................................................................................................... 7

A. This Court Lacks Personal Jurisdiction Over Roche GmbH..................................7

1. Roche GmbH is not subject to general personal jurisdiction in this 

District..........................................................................................................7

2. Roche GmbH is not subject to specific jurisdiction in this District. .............9

3. The assertion of personal jurisdiction would be neither reasonable 

nor fair........................................................................................................13

B. Symbology’s Complaint Fails to State a Claim ...................................................14

V. CONCLUSION.................................................................................................................... 16

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TABLE OF AUTHORITIES

Page(s)

Cases

Advanced Analogic Techs., Inc. v. Kinetic Techs., Inc.,

No. C-09-1360 MMC, 2009 WL 1974602 (N.D. Cal. July 8, 2009).......................................15

Asahi Metal Indus. Co. v. Super. Ct.,

480 U.S. 102 (1987)...........................................................................................................11, 12

Autogenomics, Inc. v. Oxford Gene Tech. Ltd.,

566 F.3d. 1012 (Fed. Cir. 2009)...............................................................................................10

Bell Atl. Corp. v. Twombly,

550 U.S. 554 (2007)...................................................................................................................6

Bowlby v. City of Aberdeen,

681 F.3d 215 (5th Cir. 2012) .....................................................................................................6

Bridas S.A.P.I.C. v. Gov’t of Turkmenistan,

447 F.3d 411 (5th Cir. 2006) ...................................................................................................10

Centre One v. Vonage Holdings Corp.,

No. 08-cv-00467, 2009 WL 2461003 (E.D. Tex. Aug. 10, 2009) (Davis, J.) ...........................3

Daimler AG v. Bauman,

571 U.S. 117 (2014)...................................................................................................................6

Dickson Marine Inc. v. Panalpina, Inc.,

179 F.3d 331 (5th Cir. 1999) ...................................................................................................11

Diebold Election Sys., Inc. v. AI Tech., Inc.,

562 F. Supp. 2d 866 (E.D. Tex. 2008) (Schell, J.).................................................................7, 8

F & G Research, Inc. v. Dynapoint (Taiwan), Inc.,

262 F. App’x 277 (Fed. Cir. 2008) ............................................................................................5

Goodyear Dunlop Tires Operations, S.A. v. Brown,

564 U.S. 915 (2011).........................................................................................................4, 5, 11

Gundle Lining Constr. Corp. v. Adams Cnty. Asphalt, Inc.,

85 F.3d 201 (5th Cir. 1996) .....................................................................................................10

Hanson v. Denckla,

357 U.S. 235 (1958)...................................................................................................................5

Case 2:23-cv-00630-JRG Document 10 Filed 05/08/24 Page 3 of 22 PageID #: 108
iii

Harris v. Action Chrysler Jeep Dodge, Inc.,

No. 2:09–CV–286, 2010 WL 3489084 (E.D. Tex. Aug. 12, 2010)...........................................8

Hockerson-Halberstadt, Inc. v. Propet USA, Inc.,

62 F. App’x 322 (Fed. Cir. 2003) ..............................................................................................5

Int’l Shoe Co. v. Washington,

326 U.S. 310 (1945)...............................................................................................................4, 5

J. McIntyre Mach., Ltd. v. Nicastro,

564 U.S. 873 (2011)...........................................................................................................11, 12

Johnston v. Multidata Sys. Int’l Corp.,

523 F.3d 602 (5th Cir. 2008) .....................................................................................................4

Kovalchuk v. Wilmington Sav. Fund Soc'y, FSB,

528 F. Supp. 3d 647 (E.D. Tex. 2021) (Mazzant, J.).................................................................3

Mayne Pharma Int’l PTY Ltd. v. Merck & Co.,

No. CV 15-438-LPS-CJB, 2015 WL 7833206 (D. Del. Dec. 3, 2015) ...................................15

Med. Sols., Inc. v. C Change Surgical LLC,

541 F.3d 1136 (Fed. Cir. 2008)..................................................................................................4

Merial Ltd. v. Cipla Ltd.,

681 F.3d 1283 (Fed. Cir. 2012)..................................................................................................5

N. Star Innovations, Inc. v. Toshiba Corp.,

No. 16-115-LPS-CJB, 2016 WL 7107230 (D. Del. Dec. 6, 2016)..........................................15

Nespresso USA, Inc. v. Ethical Coffee Co. S.A.,

263 F. Supp. 3d 498 (D. Del. 2017)...................................................................................12, 13

Nespresso USA, Inc. v. Ethical Coffee Comp. SA,

264 F. Supp. 3d 498 (D. Del. 2017)...............................................................................6, 12, 13

Nu-You Techs., LLC v. Beauty Town Int’l Inc.,

No. 3:15-CV-03433-N, 2016 WL 4717991 (N.D. Tex. July 7, 2016).......................................7

Nuance Commc’ns, Inc. v. Abbyy Software House,

626 F.3d 1222 (Fed. Cir. 2010)..................................................................................................4

Panda Brandywine Corp. v. Potomac Elec. Power Co.,

253 F.3d 865 (5th Cir. 2001) .....................................................................................................3

Polar Electro Oy v. Suunto Oy,

829 F. 3d 1343 (Fed. Cir. 2016)...............................................................................................12

Case 2:23-cv-00630-JRG Document 10 Filed 05/08/24 Page 4 of 22 PageID #: 109
iv

Princeton Digital Image Corp. v. Facebook, Inc.

No. 2:11-CV-400-JRG, 2012 WL 3647182 (E.D. Tex. Aug. 23, 2012) 

(Gilstrap, J.) ...............................................................................................................................9

Stragent, LLC v. BMW of N. Am., LLC,

No. 6:16-CV-446-RWS-KNM, 2017 WL 2821697 (E.D. Tex. Mar. 3, 2017) 

(Mitchell, M.J.) ..........................................................................................................................7

Synthes (U.S.A.) v. G.M. Dos Reis Jr. Ind. Com de Equip. Medico,

563 F.3d 1285 (Fed. Cir. 2009)..................................................................................................6

Systems Div., Inc. v. Teknek Elecs., Ltd.,

253 Fed. Appx. 31 (Fed. Cir. 2007)...........................................................................................4

U.S. v. Jon–T Chemicals, Inc.,

768 F.2d 686 (5th Cir.1985), cert. denied, 475 U.S. 1014 (1986)...........................................10

Univ. of Mass. Med. Sch. v. L’Oréal S.A.,

No. 17-868-CFC-SRF, 2018 WL 5919745 (D. Del. Nov. 13, 2018).......................................12

Viam Corp. v. Iowa Export-Import Trading Co.,

84 F.3d 424 (Fed. Cir. 1996)....................................................................................................13

WesternGeco L.L.C. v. Ion Geophysical Corp.,

776 F. Supp. 2d 342 (E.D. Tex. 2011).....................................................................................15

World Tanker Carriers Corp. v. MV Ya Mawlaya,

99 F.3d 717 (5th Cir. 1996) ...................................................................................................5, 6

World-Wide Volkswagen Corp. v. Woodson,

444 U.S. 286 (1980)...................................................................................................................5

York Group, Inc. v. Horizon Casket Group, Inc.,

No. H-05-2181, 2006 WL 2141081 (S.D. Tex. Jul. 28, 2006) ..................................................8

In re Zimmer Holdings, Inc.,

609 F.3d 1378 (Fed. Cir. 2010)................................................................................................14

Other Authorities

FED. R. CIV. P. 12(b)(6) .......................................................................................................6, 15, 16

FED. R. CIV. P. 4(k)(2).....................................................................................................5, 6, 7, 13

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Plaintiff Symbology Innovations, LLC’s (“Symbology’s”) lack of diligence should not be 

rewarded. Roche Diagnostics GMBH Ltd. was chosen by Symbology as the Defendant simply 

because it resembled a foreign corporation name, allowing Symbology to improperly assert 

venue in this District. However, this entity does not even exist. The foreign corporation is Roche 

Diagnostics GmbH (“Roche GmbH”). But, the company relevant to the accused NAVIFY Pass 

mobile application (the “Accused Instrumentality”) is Roche Molecular Systems, Inc. (“Roche 

Molecular”), as evidenced by the screenshots in the Complaint itself. Symbology sued the wrong 

entity by ignoring publicly available facts, and it continues to do so. This reason alone warrants 

dismissal of the Complaint for lack of personal jurisdiction.

Non-party Roche Molecular, the provider of the Accused Instrumentality in the U.S., is 

headquartered in California and has no regular or established place of business in this District. 

Symbology refused to substitute or add it as a proper party to the current case. Ironically, in the 

claim charts filed along with the Complaint, Roche Molecular is listed as the publisher of the 

Accused NAVIFY Pass Application. (Dkts. 1-4, 1-5.) Further, Symbology’s counsel boasts on 

his firm’s website that he represented Roche Molecular in the past, so he is no doubt familiar 

with the entity. (Ex. 2.)

Symbology’s claims should also be dismissed for failure to state a claim. Because Roche 

GmbH does not conduct any business in the U.S. in connection with the Accused Instrumentality, 

it cannot be alleged to have performed any infringing acts in the U.S. Accordingly, Symbology’s 

Complaint should also be dismissed for the additional reason that its allegations do not put forth 

a plausible claim for infringement by Roche GmbH . 

I. STATEMENT OF THE ISSUES

1. A court has personal jurisdiction over a defendant when either (i) the defendant is 

alleged to have committed an act or acts in the district giving rise to a stated claim or (ii) the 

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defendant has sufficient minimum contacts with the district such that exercising personal 

jurisdiction over the defendant does not offend traditional notions of fair play and substantial 

justice. Here, Roche GmbH is a non-U.S. entity and Symbology has not plausibly alleged any 

facts that purport to show that Roche GmbH has any operations within Texas or contacts with 

Texas. Should the Court therefore dismiss Symbology’s claims against Roche GmbH for lack of 

personal jurisdiction?

2. To establish infringement by a defendant, a plaintiff must identify an infringing act 

or acts attributable to the defendant. Here, Roche GmbH does not act within the U.S., and 

Symbology has not plausibly alleged any acts attributable to Roche GmbH. Should the Court 

therefore dismiss Symbology’s claims against Roche GmbH for failure to state a claim?

II. STATEMENT OF FACTS

In its Complaint, Symbology did not provide any facts that show this Court has jurisdiction 

over Roche GmbH. All allegations regarding personal jurisdiction, for example that Defendant 

has “continuous and systematic business contacts with the State of Texas,” “directly conducts 

business extensively throughout the State of Texas, by distributing, making, using offering for 

sale, selling, and advertising its services in the State of Texas and in this District,” “purposefully 

and voluntarily made its business services [...] available to residents of this District and into the 

stream of commerce,” and “retains employees specifically in this District,” are legal conclusions, 

not facts. (Dkt. 1 at ¶¶ 5, 6, 7.) 

In the Complaint, Symbology accused the NAVIFY Pass mobile application of infringing 

its patents. (Dkt. 1 at ¶ 30, Dkt Nos. 1-4, 1-5.) Public information indicates that this application 

was developed, and is maintained by Roche Molecular, a U.S. entity based in Pleasanton, 

California, not Roche GmbH. Indeed, this is clearly shown on the developer page of the Accused 

Instrumentality, and even in Symbology’s own filings. (Dkts. 1-4, 1-5.)

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Roche GmbH is a foreign entity based in Germany. Roche GmbH and Roche Molecular 

are not directly affiliated. And Symbology points to no evidence that shows Roche GmbH has any 

relationship with the Accused Instrumentality in the U.S. (Dkt. 1 at ¶ 2.) 

III. LEGAL STANDARD

A. Personal Jurisdiction

In response to a Rule 12(b)(2) motion challenging personal jurisdiction, the plaintiff bears 

the burden of demonstrating that jurisdiction is appropriate. See Centre One v. Vonage Holdings 

Corp., No. 08-cv-00467, 2009 WL 2461003, at *2 (E.D. Tex. Aug. 10, 2009) (“Once a movant 

challenges a court’s jurisdiction over him, the party asserting jurisdiction bears the burden to show 

the movant has minimum contacts with the forum state to support jurisdiction over the movant.”) 

(Davis, J.) (citing Pieczenik v. Dyax Corp., 265 F.3d 1329, 1334 (Fed. Cir. 2001)). In assessing 

personal jurisdiction, this Court need not credit conclusory allegations, even if uncontroverted. 

See Panda Brandywine Corp. v. Potomac Elec. Power Co., 253 F.3d 865, 869 (5th Cir. 2001). 

Further, “[i]t is well settled that courts may take judicial notice of matters 

of public record")” Kovalchuk v. Wilmington Sav. Fund Soc'y, FSB, 528 F. Supp. 3d 647, 658 

(E.D. Tex. 2021) (Mazzant, J.) (citing Sanders v. Univ. of Texas Pan Am. , 776 F. App’x 835, 

837 (5th Cir. 2019)). 

The law of the Federal Circuit applies to determine whether a district court may exercise 

personal jurisdiction over an out-of-state accused infringer in a patent case. Nuance Commc’ns, 

Inc. v. Abbyy Software House, 626 F.3d 1222, 1230 (Fed. Cir. 2010). “A district court has personal 

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jurisdiction over the defendant in a patent infringement case if two things are true. First, 

jurisdiction must exist under the forum state’s long-arm statute. Second, the assertion of personal 

jurisdiction must be consistent with the limitations of the due process clause.” Med. Sols., Inc. v. 

C Change Surgical LLC, 541 F.3d 1136, 1139 (Fed. Cir. 2008); see also Int’l Shoe Co. v. 

Washington, 326 U.S. 310 (1945). “Because the Texas long-arm statute extends to the limits of 

federal due process, the two-step inquiry collapses into one federal due process analysis.” 

Johnston v. Multidata Sys. Int’l Corp., 523 F.3d 602, 609 (5th Cir. 2008).

Personal jurisdiction may be established in one of two ways. The first is specific 

jurisdiction, which “depends on ‘affiliatio[n] between the forum and the underlying controversy,’ 

principally, activity or an occurrence that takes place in the forum State and is therefore subject to 

the State’s regulation.” Goodyear Dunlop Tires Operations, S.A. v. Brown, 564 U.S. 915, 919 

(2011). Two methods of establishing specific jurisdiction include the “stream-of-commerce” 

theory and the “alter ego” theory. The “stream-of-commerce” theory contemplates “a nonresident 

defendant, acting outside the forum, plac[ing] in the stream of commerce a product that ultimately 

causes harm inside the forum.” Id. at 926. Under the alter ego theory, “[e]ven though a party 

would not normally be subject to personal jurisdiction in a particular forum, courts may exercise 

personal jurisdiction over an individual or corporation that is an alter ego or successor of a 

corporation that would be subject to personal jurisdiction in that court.” Systems Div., Inc. v. 

Teknek Elecs., Ltd., 253 Fed. Appx. 31, 35 (Fed. Cir. 2007) (citation omitted).

The second basis for establishing personal jurisdiction is general jurisdiction. “A court 

may assert general jurisdiction over foreign (sister-state or foreign-country) corporations to hear 

any and all claims against them when their affiliations with the State are so ‘continuous and 

systematic’ as to render them essentially at home in the forum State.” Goodyear, 564 U.S. at 919 

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(citing Int’l Shoe, 326 U.S., at 317). For general jurisdiction to apply, federal due process requires 

that defendants have “minimum contacts” with the forum state such that maintaining the suit “does 

not offend traditional notions of fair play and substantial justice.” World-Wide Volkswagen Corp. 

v. Woodson, 444 U.S. 286, 291-92 (1980); Int’l Shoe, 326 U.S. at 316. A defendant has minimum 

contacts with a forum state when the defendant “purposefully avails itself of the privilege of 

conducting activities within the forum State, thus invoking the benefits and protections of its laws.” 

Hanson v. Denckla, 357 U.S. 235, 253 (1958). It is unlawful to exercise personal jurisdiction over 

a defendant without such minimum contacts. Int’l Shoe, 326 U.S. at 316; F & G Research, Inc. v. 

Dynapoint (Taiwan), Inc., 262 F. App’x 277, 278-79 (Fed. Cir. 2008) (affirming district court’s

grant of Taiwanese defendant’s motion to dismiss where defendant had “no contacts” with the 

forum). “Under the ‘minimum contacts’ test, a defendant may be subject to either specific 

jurisdiction or general jurisdiction.” Hockerson-Halberstadt, Inc. v. Propet USA, Inc., 62 F. App’x 

322, 336 (Fed. Cir. 2003).

Additionally, Rule 4(k)(2) of the Federal Rules of Civil Procedure permits a federal court 

to exercise personal jurisdiction over a defendant that has sufficient contacts with the U.S. as a 

whole but is not subject to jurisdiction in any single state. FED. R. CIV. P. 4(k)(2). Merial Ltd. v. 

Cipla Ltd., 681 F.3d 1283, 1294 (Fed. Cir. 2012); see also World Tanker Carriers Corp. v. MV Ya 

Mawlaya, 99 F.3d 717, 721-22 (5th Cir. 1996). In effect, Rule 4(k)(2) “approximates a federal 

long-arm statute” where the “(1) the plaintiff’s claim arises under federal law, (2) the defendant is 

not subject to personal jurisdiction in the courts of any state, and (3) the exercise of jurisdiction 

satisfies due process requirements.” World Tanker, 99 F.3d 717 at 721-22. “ The third requirement 

under Rule 4(k)(2)—the due process analysis—contemplates a defendant’s contacts with the entire 

United States, as opposed to the state in which the district court sits.” Synthes (U.S.A.) v. G.M. 

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Dos Reis Jr. Ind. Com de Equip. Medico, 563 F.3d 1285, 1295 (Fed. Cir. 2009). Rule 4(k)(2)’s 

due process analysis incorporates the same constitutional standard applicable in other personal 

jurisdiction contexts. Synthes (U.S.A.) 563 F.3d 1285 at 1296–97. 

Even in this situation, however, a non-US corporation itself—not its managing agent, 

subsidiary, or affiliate—must be “at home” in the forum state for a court to exercise general 

personal jurisdiction. See Daimler AG v. Bauman, 571 U.S. 117, 137-39 (2014). Further, if 

“minimum contacts have not been established through either a stream of commerce or agency 

approach, . . . personal jurisdiction cannot be predicated on Fed. R. Civ. P. 4(k)(2).” Nespresso 

USA, Inc. v. Ethical Coffee Comp. SA, 264 F. Supp. 3d 498, 506 (D. Del. 2017).

B. Failure to State a Claim

A party may move to dismiss a claim for a “failure to state a claim upon which relief can 

be granted.” FED. R. CIV. P. 12(b)(6). When a court considers a Rule 12(b)(6) motion, it must 

assume that all well-pleaded facts are true and must view them in the light most favorable to the 

nonmoving party. See Bowlby v. City of Aberdeen, 681 F.3d 215, 218 (5th Cir. 2012). The Court 

must decide whether those facts state a claim for relief that is plausible on its face. See Bell Atl. 

Corp. v. Twombly, 550 U.S. 554, 570 (2007). “A claim has facial plausibility when the pleaded 

factual content allows the court to draw the reasonable inference that the defendant is liable for the 

misconduct alleged.” Bowlby, 681 F.3d at 217 (quoting Ashcroft v. Iqbal, 556 U.S. 662, 678 

(2009)).

In a patent case, a plaintiff must allege facts showing that the accused infringer practices 

each and every limitation of at least one patented claim to adequately plead direct infringement by 

that entity. See Nu-You Techs., LLC v. Beauty Town Int’l Inc., No. 3:15-CV-03433-N, 2016 WL 

4717991, at *2 (N.D. Tex. July 7, 2016) (dismissing claims of direct patent infringement because 

the complaint failed to plausibly allege the defendant practiced all limitations of any asserted 

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claim); Stragent, LLC v. BMW of N. Am., LLC, No. 6:16-CV-446-RWS-KNM, 2017 WL 2821697, 

at *6 (E.D. Tex. Mar. 3, 2017) (Mitchell, M.J.). 

IV. ARGUMENT

A. This Court Lacks Personal Jurisdiction Over Roche GmbH.

Symbology’s claims against Roche GmbH should be dismissed because this Court lacks 

personal jurisdiction over it. Roche GmbH is subject to neither general nor specific jurisdiction 

under any theory of personal jurisdiction, including the stream-of-commerce of alter-ego theories. 

Additionally, Rule 4(k)(2) does not grant this Court personal jurisdiction over Roche GmbH 

because Roche GmbH lacks sufficient contacts with the U.S. 

1. Roche GmbH is not subject to general personal jurisdiction in this

District.

A court may only exercise general jurisdiction when a defendant maintains “continuous 

and systematic” contacts with the state. “However, these contacts must be ‘so substantial and of 

such a nature as to justify suit [against the defendant] on causes of action arising from dealings 

entirely different from those activities.’” Hockerson-Halberstadt, 62 F. App’x at 337 (citing 

Int’l Shoe, 326 U.S. at 318). 

This requirement is a hurdle that Symbology cannot overcome. Indeed, Symbology’s 

Complaint makes no effort to satisfy this requirement. See Diebold Election Sys., Inc. v. AI Tech., 

Inc., 562 F. Supp. 2d 866, 876 (E.D. Tex. 2008) (Schell, J.) (citing Avocent Huntsville Corp. v. 

Aten Intern, Co., Ltd., 552 F.3d 1324, 1330 (Fed. Cir. 2008)). And “[o]nce a non-resident 

defendant files a motion to dismiss for lack of personal jurisdiction, the burden of establishing the 

district court’s jurisdiction lies with the party seeking to invoke the court’s jurisdiction.” Id. 

The types of contacts that give rise to personal jurisdiction include property ownership, 

payment of taxes, frequent travel, having an office or employees in the district, designating an 

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agent for service of process in the district, regular conduct of business, and maintenance of bank 

accounts in the district. Harris v. Action Chrysler Jeep Dodge, Inc., No. 2:09–CV–286, 2010 WL 

3489084, at *2 (E.D. Tex. Aug. 12, 2010) (Everingham, M.J.) (finding no general jurisdiction 

where defendant was not licensed to do business in Texas, had no presence in Texas, and had no 

agents or employees in Texas); York Group, Inc. v. Horizon Casket Group, Inc., No. H-05-2181, 

2006 WL 2141081, at *6 (S.D. Tex. Jul. 28, 2006). Symbology’s Complaint fails to establish that 

Roche GmbH has any of these contacts with the U.S., let alone with Texas. 

Symbology’s Complaint does not establish how Roche GmbH purposefully directed any 

activities at Texas. Symbology’s allegations concerning personal jurisdiction are entirely 

conclusory. Specifically, the Complaint alleges “Defendant has continuous and systematic 

business contacts with the State of Texas,” without any plausible factual allegations. (Dkt. 1 at 

¶ 5.) Other similarly conclusory allegations include that “Defendant directly conducts business 

extensively throughout the State of Texas, by distributing, making, using, offering for sale, selling, 

and advertising its services in the State of Texas and in this District.” (Dkt. 1 at ¶ 6.) These 

allegations are legal conclusions unsupported by any plausible factual allegations. Nor could they 

be because these statements are untrue. 

Symbology’s Complaint also fails to allege plausible facts to suggest Roche GmbH has 

any contacts with Texas that could justify exercise of general jurisdiction. Roche GmbH has never 

done business in Texas, has never had offices or employees in Texas, and has never paid any taxes 

or fees in Texas. It has no properties in Texas and directs no activities within the state. 

Roche GmbH’s situation in this case is therefore similar to that before this Court in 

Princeton Digital Image Corp. v. Facebook, Inc. No. 2:11-CV-400-JRG, 2012 WL 3647182, at 

*1 (E.D. Tex. Aug. 23, 2012) (Gilstrap, J.). In that case, the plaintiff sued multiple defendants, 

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including Getty Images, “a holding company that ha[d] never done any business in Texas, never 

had any offices or employees in Texas, and ha[d] never paid taxes in Texas.” Id. at *2. The Court 

therefore found it did not have personal jurisdiction over Getty Images because “[t]here [was] no 

evidence in the record to support a plausible claim that Getty Images use[d] (and allegedly 

infringe[d]) the technology at issue in Texas. In fact, because it [was] simply a holding company, 

there [was] no evidence before the Court that Getty Images use[d] the allegedly infringing 

technology in any District.” Id. The Court therefore dismissed the claims against Getty Images, 

even though its operating subsidiary, Getty Images US, was subject to personal jurisdiction in 

Texas and other states. Id. at *3.

This case presents similar facts. Roche GmbH is a foreign company with no operations, 

businesses, offices, or employees in Texas. On the other hand, Roche Molecular may be subject 

to jurisdiction in the U.S., but it is not subject to proper venue in this District. And Symbology 

has not alleged that the Roche Molecular’s acts should be imputed to Roche GmbH—nor can it. 

Accordingly, Symbology’s Complaint is devoid of any facts to support general jurisdiction over 

Roche GmbH, and Symbology’s claims against Roche GmbH should be dismissed. 

2. Roche GmbH is not subject to specific jurisdiction in this District. 

This Court also does not have specific jurisdiction over Roche GmbH. Specific jurisdiction 

exists when (1) the defendant purposefully directed its activities at residents of the forum, (2) the 

claim arises out of or relates to those activities, and (3) assertion of personal jurisdiction is 

reasonable and fair. Autogenomics, Inc. v. Oxford Gene Tech. Ltd., 566 F.3d. 1012, 1018 (Fed. 

Cir. 2009). The plaintiff has the burden of proving the first two prongs. Only if the plaintiff first 

meets its burden of proof, then the defendant is required to present a compelling case that the 

presence of other considerations would render jurisdiction unreasonable. Id.

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Symbology has not and cannot meet the first two prongs under either theory: stream-ofcommerce or alter ego. Here, Roche GmbH does not put any products into the stream of 

commerce in the U.S., and Roche Molecular is not the alter ego of Roche GmbH. Accordingly, 

there is no basis for Symbology to argue personal jurisdiction over Roche GmbH based on its 

activities or the activities of Roche Molecular. 

(a) This Court does not have specific jurisdiction under an alter-ego 

theory.

Symbology cannot impute any of Roche Molecular’s activity to Roche GmbH under an 

alter-ego theory, nor does Symbology attempt to in its barebones and conclusory jurisdictional 

allegations. “The alter ego doctrine, like all variations of piercing the corporate veil doctrine, is 

reserved for exceptional cases.” Bridas S.A.P.I.C. v. Gov’t of Turkmenistan, 447 F.3d 411, 416 

(5th Cir. 2006). As such, Symbology must undertake an exhaustive 11-factor1analysis to apply 

this doctrine. Gundle Lining Constr. Corp. v. Adams Cnty. Asphalt, Inc., 85 F.3d 201, 208-09 (5th 

Cir. 1996). Yet, Symbology’s Complaint does not address a single factor. 

Symbology does not provide any plausible factual allegations suggesting any kind of 

relationship between Roche Molecular and Roche GmbH. In fact, Symbology does not even 

mention Roche Molecular in its Complaint.2 Symbology also turns a blind eye to the 

1 The Fifth Circuit has developed the following list of factors to be used when determining whether a subsidiary is the 

alter ego of the parent: “(1) the parent and the subsidiary have common stock ownership; (2) the parent and the 

subsidiary have common directors or officers; (3) the parent and the subsidiary have common business departments; 

(4) the parent and the subsidiary file consolidated financial statements and tax returns; (5) the parent finances the 

subsidiary; (6) the parent caused the incorporation of the subsidiary; (7) the subsidiary operates with grossly 

inadequate capital; (8) the parent pays the salaries and other expenses of the subsidiary; (9) the subsidiary receives no 

business except that given to it by the parent; (10) the parent uses the subsidiaries property as its own; (11) the daily 

operations of the two corporations are not kept separate; and (12) the subsidiary does not observe the basic corporate 

formalities, such as keeping separate books and records and holding shareholder and board meetings.” U.S. v. Jon–T 

Chemicals, Inc., 768 F.2d 686, 691–92 (5th Cir.1985) (internal citations omitted), cert. denied, 475 U.S. 1014 (1986).

2

Symbology’s counsel’s firm website also boasts his representation of Roche Molecular (Ex. 2.) He is clearly 

familiar with Roche Molecular, yet he chose to ignore the existence of this entity.

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overwhelming amount of evidence—including exhibits Symbology itself filed with its 

Complaint—showing that Roche Molecular is the entity responsible for the Accused 

Instrumentality. (See Dkts. 1-4, 1-5.) In sum, Symbology can point to no facts justifying a 

deviation from the long-established “institutional independence of related corporations.” Dickson 

Marine Inc. v. Panalpina, Inc., 179 F.3d 331, 338 (5th Cir. 1999). Accordingly, Symbology has 

not established that this Court can exercise general jurisdiction over Roche GmbH under an alter 

ego theory.

(b) Specific jurisdiction does not exist under the stream-of-commerce 

theory.

The “stream-of-commerce” theory contemplates “a nonresident defendant, acting outside 

the forum, plac[ing] in the stream of commerce a product that ultimately causes harm inside the 

forum.” Goodyear, 564 U.S. at 926. But in patent infringement actions, this theory applies only 

in limited circumstances, none of which is present here.

The Supreme Court has articulated two tests for specific jurisdiction under a stream-ofcommerce theory. The first test requires that the defendant place the accused products into the 

stream of commerce and be “aware that the final product is being marketed in the forum State.” 

Asahi Metal Indus. Co. v. Super. Ct., 480 U.S. 102, 117 (1987); accord J. McIntyre Mach., Ltd. v. 

Nicastro, 564 U.S. 873, 881-82 (2011). The second test is the same as the first but additionally 

requires “an act of the defendant purposefully directed toward the forum State.” Asahi, 480 U.S. 

at 112; J. McIntyre, 564 U.S. at 883. The Federal Circuit has thus far not decided which test to 

adopt for patent cases. See, e.g., Polar Electro Oy v. Suunto Oy, 829 F. 3d 1343, 1349-50 (Fed. 

Cir. 2016).

Symbology cannot satisfy the most basic element of either Asahi test. As shown on the 

developer page of the NAVIFY Pass application, as well as in the Application itself, the Accused 

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NAVIFY Pass application was developed and is maintained by Roche Molecular. (See Dkts. 1-4, 

1-5; also Ex. 1, 3-5.) 

Symbology also does not allege any facts to suggest that Roche GmbH puts any products 

in the stream of commerce. The stream-of-commerce “refers to the movement of goods from 

manufacturers through distributors to consumers.” J. McIntyre, 564 U.S. at 881-82. Roche GmbH 

does not develop, maintain, distribute, or sell the Accused NAVIFY Pass application in the U.S. 

Nor does it conduct business in the U.S. . Therefore, Roche GmbH does not put any products into 

the stream of commerce in the U.S., and this Court has no specific jurisdiction over Roche GmbH. 

See Nespresso USA, Inc. v. Ethical Coffee Co. S.A., 263 F. Supp. 3d 498 (D. Del. 2017) (finding 

no specific jurisdiction under stream-of-commerce theory where foreign defendant did not 

manufacture, distribute, import, or ship the accused products); Univ. of Mass. Med. Sch. v. L’Oréal 

S.A., No. 17-868-CFC-SRF, 2018 WL 5919745 (D. Del. Nov. 13, 2018) (same).

Courts have found that a U.S. entity introducing an accused product into the stream of 

commerce is insufficient to show personal jurisdiction over a foreign affiliate. In Nespresso, for 

example, the court rejected the argument that the Swiss defendants could be held responsible for 

the actions of their U.S. subsidiary. 263 F. Supp. 3d at 504. Rather, the plaintiff must “demonstrate 

that Nestlé and Nestec [Swiss defendants] were responsible for introducing the Nespresso 

machines [accused products] into the stream of commerce, and not simply that a subsidiary within 

the U.S. introduced the Nespresso machines.” Id. The Nespresso court found that “[s]ince 

minimum contacts have not been established through either a stream of commerce or agency 

approach, ipso facto, personal jurisdiction cannot be predicated on Fed. R. Civ. P. 4(k)(2).” Id. at 

506. 

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The same applies here. Roche GmbH is a separate entity located overseas, and Roche 

Molecular’s activities cannot be imputed onto Roche GmbH to establish personal jurisdiction 

under Rule 4(k)(2). Symbology cannot and did not allege otherwise, and thus any “stream-ofcommerce” theory of personal specific jurisdiction must fail.

3. The assertion of personal jurisdiction would be neither reasonable nor 

fair.

Even if Symbology could properly allege facts to support the first two prongs of the 

personal jurisdiction test (which it did not), this Court should still decline to exercise personal 

jurisdiction because it would be neither fair nor reasonable to force Roche GmbH to litigate 

Symbology’s claims in this unfamiliar forum. 

The third factor regarding traditional notions of fair play and substantial justice involves a 

balancing test with five questions: First, what is the burden on the defendant? Second, what, if 

any, are the interests of the forum state? Third, what is the plaintiff’s interest in obtaining relief? 

Fourth, what is the interstate judicial system’s interest in obtaining the most efficient resolution of 

the controversies? And fifth, what are the interests of the states in furthering their social policies? 

Viam Corp. v. Iowa Export-Import Trading Co., 84 F.3d 424, 429 (Fed. Cir. 1996).

These factors weigh against finding specific jurisdiction here. Traditional notions of fair 

play and substantial justice should weigh against allowing a plaintiff to circumvent the patent 

venue rules set by the Supreme Court in TC Heartland. Roche GmbH is a foreign company with 

no employees in Texas. It has been pulled into this dispute by Symbology solely for the purpose 

of forum shopping. Meanwhile, Roche Molecular is based in California, not Texas. 

Considering the five questions, it becomes even clearer that the Court should not find 

specific jurisdiction here: First, the burden on Roche GmbH is significant, as exercising 

jurisdiction would force Roche GmbH to litigate in an unfamiliar forum wherein it has no activities 

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or personnel. This dispute centers on activities involving the Accused Instrumentality, and the 

entity responsible for it is one that Symbology refused to add to this case, because adding Roche 

Molecular as a defendant would then require that it be dismissed from the case for lack of proper 

venue. Proceeding with Roche GmbH as the defendant would nonetheless introduce delay for the 

Court and increased costs for the parties because any evidence or witnesses for Roche GmbH 

would be located outside the U.S., and any relevant witnesses for Roche Molecular would be 

located in California.

Second and third, neither the parties nor the State of Texas has any interest in forcing a 

sister company with no employees to litigate in this District. Symbology has no genuine interest 

in litigating this lawsuit in Texas. Symbology has no website, and makes no products. In short, it 

appears Symbology was created solely for purposes of litigation (as evidenced by the 

approximately 250 lawsuits it has filed), and any local interest therefore is minimal. See In re 

Zimmer Holdings, Inc., 609 F.3d 1378, 1381 (Fed. Cir. 2010) (finding plaintiff’s interest entitled 

to no weight where its “presence in Texas appears to be recent, ephemeral, and an artifact of 

litigation”).

Fourth, the interstate judicial system has no interest in maintaining this litigation in EDTX 

because the relevant parties, Roche GmbH and Roche Molecular, do not have any connection to 

EDTX. And fifth, resolving allegations of patent infringement is not relevant to any state’s social 

policies. Consequently, the answers to these questions establish that exercising personal 

jurisdiction over Roche GmbH would not be fair or reasonable.

B. Symbology’s Complaint Fails to State a Claim 

Symbology failed to provide any support for direct infringement performed by Roche 

GmbH. A minimal investigation (e.g., looking at the Accused Instrumentality) would show that 

the provider of the Accused Instrumentality is actually Roche Molecular. (Dkts. 1-4, 1-5.) As 

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discussed above, Roche GmbH does not perform any business activities in the U.S. and therefore 

engages in no activities that Symbology could accuse of direct infringement. None of the 

remaining allegations in the Complaint suggests that Roche GmbH provides the Accused 

Instrumentality to customers in this District. Symbology knows the proper defendant is Roche 

Molecular, but Symbology also knows that any attempt to add Roche Molecular as a defendant 

would make venue improper in this District pursuant to TC Heartland. If Symbology seeks relief, 

it should file suit against Roche Molecular in Delaware or California, where it resides and has a 

regular and established places of business. 

Dismissal pursuant to Rule 12(b)(6) is appropriate when a complaint fails to adequately 

plead infringement against the appropriate defendant. See, e.g., WesternGeco L.L.C. v. Ion 

Geophysical Corp., 776 F. Supp. 2d 342 (E.D. Tex. 2011) (dismissing patent infringement claims 

pursuant to Fed. R. Civ. P. 12(b)(6) where the allegedly infringing acts took place outside of the 

U.S.); Advanced Analogic Techs., Inc. v. Kinetic Techs., Inc., No. C-09-1360 MMC, 2009 WL 

1974602, at *3 (N.D. Cal. July 8, 2009) (“To the extent KTI seeks dismissal of the complaint for 

failure to allege infringing activity by KTI within the U.S., the [Rule 12(b)(6)] motion will be 

granted.”); Mayne Pharma Int’l PTY Ltd. v. Merck & Co., No. CV 15-438-LPS-CJB, 2015 WL 

7833206, at *4, 6 (D. Del. Dec. 3, 2015) (dismissing infringement claim against a foreign 

defendant pursuant to Rule 12(b)(6)); N. Star Innovations, Inc. v. Toshiba Corp., No. 16-115-LPSCJB, 2016 WL 7107230, at *2 (D. Del. Dec. 6, 2016) (dismissing complaint pursuant to Rule 

12(b)(6) for failing to provide “factual allegations about the nature of defendant’s business, nor 

their activities in the United States” and observing that “without more, the fact that [the Japanese 

defendant] is not a U.S.-based entity might well affirmatively suggest that it has not done any of 

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16

these things”). Symbology failed to plead any facts to support direct infringement by Roche 

GmbH.

V. CONCLUSION

For the foregoing reasons, Roche GmbH respectfully requests that this Court dismiss the 

allegations against Roche GmbH with prejudice under Rules 12(b)(2) and 12(b)(6).

Dated: May 8, 2024 Respectfully submitted,

By: /s/ Aaron P. Pirouznia

Terry J. Stalford

Texas Bar No. 24011686

stalford@fr.com

Aaron P. Pirouznia

Texas Bar No. 24098958

pirouznia@fr.com

Noel F. Chakkalakal

Texas Bar No. 24053676

chakkalakal@fr.com

Alexander H. Martin

Texas Bar No. 24091828

martin@fr.com

FISH & RICHARDSON P.C.

1717 Main Street, Suite 5000

Dallas, TX 75201

Telephone: (214) 747-5070

COUNSEL FOR DEFENDANT

ROCHE DIABETES CARE, LIMITED

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CERTIFICATE OF SERVICE

The undersigned hereby certifies that a true and correct copy of the above and foregoing 

document has been served on May 8, 2024, to all counsel of record who are deemed to have 

consented to electronic service via the Court’s CM/ECF system. 

/s/ Aaron P. Pirouznia

Aaron P. Pirouznia

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