IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF TEXAS

MARSHALL DIVISION

HANSHOW TECHNOLOGY CO., LTD. AND 

SHANGHAI HANSHI INFORMATION 

TECHNOLOGY CO., LTD.

Plaintiffs,

v. 

SES-IMAGOTAG SA, SES-IMAGOTAG GMBH 

AND CAPTANA GMBH

Defendants.

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Case No. 2:23-cv-00617-RWS-RSP

PLAINTIFFS’ OPPOSITION TO SES-IMAGOTAG GMBH AND CAPTANA 

GMBH’S MOTION TO DISMISS COMPLAINT PURSUANT TO FED. R. CIV. P. 

12(B)(2)

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TABLE OF CONTENTS

I. INTRODUCTION .............................................................................................................. 1

II. BACKGROUND AND STATEMENT OF FACTS .......................................................... 2

III. ARGUMENT AND AUTHORITIES ................................................................................. 5

A. Legal Standard ........................................................................................................ 5

B. The Court Has Specific Jurisdiction Over the Moving Defendants ....................... 7

1.

2. Personal Jurisdiction Exists Over the Moving Defendants Under a 

Stream of Commerce Theory .................................................................... 11

3. Exercising Personal Jurisdiction Over the Moving Defendants 

Would Not Offend Traditional Notions of Fair Play and 

Substantial Justice ..................................................................................... 14

C. Personal Jurisdiction Can Be Established Under Fed. R. Civ. P. 4(k)(2) ............. 17

D. VusionGroup GmbH’s Appearance in a Prior Litigation Establishes that 

Personal Jurisdiction is Proper in Texas ............................................................... 20

V. CONCLUSION ................................................................................................................ 21

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TABLE OF AUTHORITIES

 Page(s) 

Cases

AX Wireless LLC v. Lenovo Group Ltd., 

2023 WL 7105701 (E.D. Tex. Sep. 6, 2023) ...............................................................15, 16, 17

Beverly Hills Fan Co. v. Royal Sovereign Corp., 

21 F.3d 1558 (Fed. Cir. 1994)....................................................................................6, 7, 11, 12

Bristol-Myers Squibb Co. v. Superior Court of Cal., 

137 S. Ct. 1773 (2017) ...............................................................................................................6

Dontos v. Vendomation NZ Ltd., 

582 F. App'x 338 (5th Cir. 2014) .............................................................................................14

Frito-Lay North America, Inc. v. Medallion Foods, Inc. 

(E.D. Tex. Mar. 30, 2012) ......................................................................................................5, 6

Hanshow Technology Co., Ltd. v. SES-Imagotag SA and SES-Imagotag GmbH

Case No. 2:23-cv-00174 (E.D. Tex.) .......................................................................................20

J. McIntyre Machinery, Ltd. v. Nicastro, 

564 U.S. 873 (2011) ...................................................................................................................6

Largan Precision Co., Ltd. v. Ability Opto-Electronics Technology Co., Ltd., 

2020 WL 569815 (E.D. Tex. 2020) .......................................................................................5, 7

Seasons USA, Inc. v. SCS Direct, Inc., 

2023 WL 5344342 (E.D. Tex. June 9, 2023) ...............................................................12, 13, 15

Touchcom, Inc. v. Bereskin & Parr, 

574 F.3d 1403 (Fed. Cir. 2009)....................................................................................17, 18, 19

Wapp Tech Ltd. P’ship v. Micro Focus Int’l, PLC, 

406 F.Supp.3d 585 (E.D. Tex. Aug. 13, 2019) ........................................................................20

Wien Air Alaska, Inc. v. Brandt, 

195. F.3d 208 (5th Cir. 1999) ..................................................................................................14

World-Wide Volkswagen Corp. v. Woodson, 

444 U.S. 286 (1980) .............................................................................................................6, 11

Statutes

28 U.S.C. §§ 1331 and 1338(a)......................................................................................................17

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Other Authorities

Federal Rule of Civil Procedure 12(b)(2) ........................................................................................5

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I. INTRODUCTION

VusionGroup GmbH (formerly known as SES-imagotag GmbH) and Captana GmbH’s 

(together “Moving Defendants”) Motion to Dismiss (Dkt No. 38) (“Motion”) is replete with 

disingenuous statements asserting that the Moving Defendants have no contact with Texas or the 

United States in general.

1

 These assertions are incorrect. As Plaintiffs Hanshow Technology Co., 

Ltd. and Shanghai Hanshi Information Technology Co. Ltd. (collectively, “Hanshow” or 

“Plaintiffs”) sufficiently pled in the Complaint, Moving Defendants are subject to personal 

jurisdiction in the State of Texas. 

Moving Defendants are involved in the of 

the Captana cameras and system and VUSION electronic shelf label (ESL) products (the “Accused 

Products”) that are sold in the United States and that are accused of infringement in this case. 

 Moving Defendants

. 

 

 

1

 VusionGroup SA (f/k/a SES-imagotag SA) is also a named defendant and does not challenge 

personal jurisdiction and/or join Moving Defendants’ Motion. 

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Moreover, Moving Defendants 

. 

Further, even if Moving Defendants were not subject to personal jurisdiction in Texas, 

personal jurisdiction is established under Fed. R. Civ. P. 4(k)(2), which states that for a federal law 

claim, like this one, personal jurisdiction exists if the defendant is not subject to jurisdiction in any 

state’s court of general jurisdiction, and exercising jurisdiction is consistent with the U.S. 

Constitution and laws. 

Thus, this Court has personal jurisdiction over the Moving Defendants. Accordingly, 

Plaintiffs respectfully request that the Court deny the Moving Defendants’ Motion. 

II. BACKGROUND AND STATEMENT OF FACTS

Moving Defendants, Captana GmbH and VusionGroup GmbH (f/k/a SES-imagotag 

GmbH), filed the Motion on April 25, 2024, alleging that this Court does not have personal 

jurisdiction over Moving Defendants. See e.g., Motion at 1. VusionGroup SA (f/k/a SESimagotag SA) is a named defendant but does not challenge personal jurisdiction or join Moving 

Defendants’ Motion. The Court ordered Plaintiffs to complete jurisdictional discovery by July 8, 

2024 and to respond to Moving Defendants’ Motion by July 29, 2024. See Dkt. No. 45. 

Captana GmbH, VusionGroup GmbH, and VusionGroup SA are the named Defendants in 

this case. Moving Defendants are wholly-owned subsidiaries of VusionGroup SA, who does not 

join the Moving Defendants’ Motion to Dismiss. 

VusionGroup SA is a French corporation that is the parent company to Moving Defendants 

and . Ex. 

4, (VUSIONGROUP_EDTX_009937). 

 For example, VusionGroup SA 

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Motion at 2; see also id. at 9 (“As stated, VusionGroup GmbH is located in, and conducts its 

business in Austria.”). As Ms. Vittorio, the same individual who submitted declarations on behalf 

of VusionGroup GmbH and Captana GmbH, testified to during her deposition, 

 Ex. 1 at 48:20–50:11; 56:4–9; see also Ex. 5 

 

VusionGroup GmbH also . See 

Ex. 1 at 80:6–17. 

While VusionGroup GmbH does not have an office in Texas, 

 Ex. 1 at 63:4–10; Ex. 3 at 13. Contrary to Moving Defendants’ 

assertions, VusionGroup GmbH 

 Ex. 1 at 50:12–17. 

VusionGroup Inc. is a wholly-owned subsidiary of VusionGroup SA that is based in the 

United States. See Ex. 4. 

Tr.). For example, VusionGroup Inc. 

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. Ex. 1 at 51:13–20; see also Ex. 7; Ex. 1-9. 

. Ex. 1 at 90:9–14. As discussed 

above in connection with Captana GmbH and VusionGroup GmbH, VusionGroup Inc. 

 See Ex. 8 (VUSIONGROUP_EDTX_010649–667); Ex. 9 

(VUSIONGROUP_EDTX_010598–603); Ex. 5; Ex. 6. 

III. ARGUMENT AND AUTHORITIES

A. Legal Standard 

Federal Rule of Civil Procedure 12(b)(2) requires a court to dismiss a claim if the court 

does not have personal jurisdiction over the defendant. Fed. R. Civ. P. 12(b)(2). After a defendant 

files a motion to dismiss for lack of personal jurisdiction, it is the plaintiff’s burden to establish 

that personal jurisdiction exists. Largan Precision Co., Ltd. v. Ability Opto-Electronics 

Technology Co., Ltd., 2020 WL 569815, *2 (E.D. Tex. 2020) (citing Bullion v. Gillespie, 895 F.2d 

213, 217 (5th Cir. 1990). When a court rules on a motion to dismiss for lack of personal jurisdiction 

without holding an evidentiary hearing, the plaintiff must present sufficient facts as to make out a 

prima facie case supporting jurisdiction to satisfy its burden. Largan Precision Co., 2020 WL 

569815 at *2. When considering the motion to dismiss, the court must accept as true the plaintiff's 

uncontroverted allegations and resolve all factual disputes in favor of the plaintiff. Id. 

A federal court may exercise personal jurisdiction over a foreign defendant if (1) the longarm statute of the state in which the federal court sits creates personal jurisdiction over the foreign 

defendant, and (2) the exercise of personal jurisdiction over the defendant is consistent with the 

due process guarantees of the United States Constitution. Frito-Lay North America, Inc. v. 

Medallion Foods, Inc. (E.D. Tex. Mar. 30, 2012). The Texas long-arm statute extends to the full 

extent permitted by the Due Process Clause and creates personal jurisdiction over foreign 

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defendants. Therefore, the personal jurisdiction analysis rests on determining if the Court’s 

exercise of personal jurisdiction is consistent with due process. 

Exercise of personal jurisdiction over a defendant is consistent with due process if (1) the 

defendant has purposefully availed itself of the benefits and protections of the forum state by 

establishing minimum contacts with the forum state; and (2) the exercise of jurisdiction over the 

defendant does not offend traditional notions of fair play and substantial justice. Frito-Lay, 867 

F.Supp.2d at 864. 

“Minimum contacts” can be established through contacts sufficient to support the exercise 

of either general or specific jurisdiction. Id. (citing Viam Corp. v. Iowa Export-Import Trading 

Co., 84 F.3d 424, 428 (Fed. Cir. 1996); J. McIntyre Machinery, Ltd. v. Nicastro, 131 S.Ct. 2780, 

2787–88 (2011)). General jurisdiction over nonresident defendant exists only when the 

defendant's contacts with the forum state are continuous and systemic. Frito-Lay, 867 F.Supp.2d 

at 865. Specific jurisdiction exists over a nonresident defendant where the plaintiff alleges a cause 

of action which grows out of or relates to a contact between the defendant and the forum state. Id.; 

Bristol-Myers Squibb Co. v. Superior Court of Cal., 137 S. Ct. 1773, 1780–81 (2017). In cases 

where a district court exercises specific jurisdiction over a nonresident defendant there needs to be 

some act by which the defendant purposefully avails itself of the privilege of conducting activities 

within the forum state, thus invoking the benefits and protections of its laws. Frito-Lay, 867 

F.Supp.2d at 865; J. McIntyre Machinery, Ltd. v. Nicastro, 564 U.S. 873, 882 (2011). 

Courts have held that a defendant placing a product into the stream of commerce may 

provide the basis to establish specific personal jurisdiction over the defendant. See World-Wide 

Volkswagen Corp. v. Woodson, 444 U.S. 286, 297–98 *1980); Beverly Hills Fan Co. v. Royal 

Sovereign Corp., 21 F.3d 1558, 1566 (Fed. Cir. 1994). The exercise of specific jurisdiction under 

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a stream of commerce theory is proper if a defendant’s conduct and connections with the forum 

state are such that they should have reasonably have anticipated being brought into court there. 

Beverly Hills Fan, 21 F.3d at 1566; Largan Precision Co. v. Ability Opto-Electronics Tech. Co., 

2020 WL 569815, *6 (E.D. Tex. 2020). 

B. The Court Has Specific Jurisdiction Over the Moving Defendants

As Moving Defendants recognize, specific jurisdiction exists when (1) the defendant 

purposefully directs its activities to the forum State, (2) the claims arise out of or relate to those 

activities; and (3) the assertion of jurisdiction is reasonable and fair. Motion at 5. All of those 

elements are met here.3

Plaintiffs allege that Moving Defendants “market, advertise, and/or otherwise promote 

globally the VUSION digital shelf platform, which includes, among other things, the accused 

infringing Captana devices, systems, and/or functionality, and VUSION electronic shelf labels 

(“VUSION ESLS”)” and cite VusionGroup’s “A VUSION for the future 2022-2027 Strategic 

Plan” (Exhibit 3 to the Complaint) in support. Dkt. No. 1 at ¶ 9; Dkt. No. 1-4. As “A VUSION 

for the future 2022-2027 Strategic Plan” establishes, and as the below figure shows, the Captana 

Accused Products are already running in many stores, including stores in the United States. See 

Dkt. No. 1-4 at 93. 

 

3

 For purposes of responding to the Motion, Plaintiffs believe that specific jurisdiction exists 

under at least a stream of commerce theory. However, Plaintiffs do not concede that general 

jurisdiction exists.

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Further, Plaintiffs correctly allege that personal jurisdiction exists because “Defendants, directly 

or through intermediaries, have established minimum contacts with the State of Texas such that 

the exercise of jurisdiction would not offend traditional notions of fair play and substantial justice,” 

note that “Defendants have made, used, provided, supplied, distributed, sold, offered for sale, 

and/or imported” the Accused Products in Texas and continue to do so, and identify hiring that is 

occurring in Texas related to sales of the Accused Products. Dkt. No. 1 at ¶¶ 14–15. 

While Moving Defendants take issue with these assertions, they selectively cherry pick the 

specific allegations they refute, asserting only that Moving Defendants do not “make, sell, 

advertise, or import any CaptanaTM in or into the United States or the State of Texas.” Motion at 

6. Moving Defendants identify only those allegations, because they cannot refute that Moving 

Defendants 

. 

 See Ex. 1 at 80:6–17, 47:12–14; Ex. 2 at 13:12–14:22. See also Ex. 3 at 13. It is 

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also undisputed that not only are the Captana Accused Products and VUSION ESLs 

 Ex. 1 at 50:12–17, 51:13–20; 

see also Ex. 2 at 13:2–11; Ex. 7; Ex. 1-9. 

 Ex. 2 at 

13:2–14:2. 

 Id. at 15:4–10.

Captana GmbH also provides 

. Ex. 2 at 9:15–10:1; 53:12–21. For 

example, 

 Id. at 9:15–10:1. 

 Id. at 9:1–5. 

 Id. at 47:1–20; see also Ex. 10. 

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. 1 at 66:12–21. 

. Ex. 1 at 89:18–90:14. 

 Ex. 1 at 50:12–17. 

 Ex. 1 at 63:4–10; Ex. 3 at 

12–13. As alleged in the Complaint, Moving Defendants conduct substantial business in Texas 

either directly or through intermediaries such as VusionGroup SA and VusionGroup Inc. Dkt. No. 

1 at ¶ 13. 

Additionally, while Moving Defendants assert that Plaintiffs’ allegations are somehow 

unclear or non-specific because they refer to Defendants as a whole and not Moving Defendants 

individually, this point is of no moment as the allegations regarding the Moving Defendants and 

VusionGroup SA’s interactions with Texas apply to all three entities. Similarly, while the Moving 

Defendants assert that the Complaint does not allege any specific locations in Texas that the 

Moving Defendants have contact with, Moving Defendants ignore that the Complaint expressly 

identifies VusionGroup Inc.’s office in Texas. Dkt. No. 1 ¶¶ 13–15. As discussed above, 

. Ex. 1 at 63:4–10, 66:12–21; Ex. 3 at 12–13. 

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Hanshow has established that the Moving Defendants have minimum contacts with Texas, 

and Moving Defendants conduct and connections with Texas are such that they should reasonably 

have anticipated being brought into court in Texas. 

2. Personal Jurisdiction Exists Over the Moving Defendants Under a 

Stream of Commerce Theory

Contrary to the Moving Defendants’ assertions, Hanshow has established specific 

jurisdiction under the “stream of commerce” theory. The stream of commerce theory recognizes 

that “[t]he forum State does not exceed its powers under the Due Process Clause if it asserts 

personal jurisdiction over a corporation that delivers its products into the stream of commerce with 

the expectation that they will be purchased by consumers in the forum State.” World-Wide 

Volkswagen Corp. v. Woodson, 444 U.S. 286, 297–98 (1980). While Moving Defendants 

recognize this, they argue that Moving Defendants have not sent goods to the forum state because 

VusionGroup GmbH does not sell products and the Complaint does not offer specific facts that 

Captana GmbH purposefully directs products to the state of Texas or anywhere else in the United 

States. Motion at 8–9. The Moving Defendants then make the wholly unsupported and incorrect 

assertion that the evidence confirms the opposite. Id. The Moving Defendants’ arguments fail. 

The Federal Circuit has recognized that the exact requirements of the stream of commerce 

theory are unsettled. See Beverly Hills Fan Co. v. Royal Sovereign Corp., 21 F.3d 1558, 1566–67 

(Fed. Cir. 1994). In one version of the stream of commerce theory, “the exercise of personal

jurisdiction requires more than the mere act of placing a product in the stream of commerce ... 

there must be in addition ‘an action of the defendant purposefully directed toward the forum 

State.’” Id. at 1566 (citing Asahi, 480 U.S. at 112) (emphasis in original). In another version of 

the stream of commerce theory, the showing of additional conduct is unneeded. See Beverly Hills, 

21 F.3d at 1566 (“‘The stream of commerce refers not to unpredictable currents or eddies, but to 

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the regular and anticipated flow of products from manufacture to distribution to retail sale.... A 

defendant who has placed goods in the stream of commerce benefits economically from the retail 

sale of the final product in the forum State, and indirectly benefits from the State’s laws that 

regulate and facilitate commercial activity.’”) (citing Asahi, 480 at 117.). While the Federal Circuit 

has not commented on which version of the stream of commerce theory is proper, the Federal 

Circuit articulated the necessary ingredients for the exercise of jurisdiction consistent with due 

process: “defendants, acting in consort, placed the accused [product] in the stream of commerce, 

they knew the likely destination of the products, and their conduct and connections with the forum 

state were such that they should reasonably have anticipated being brought into court there.” 

Beverly Hills, 21 F.3d at 1566. 

The debate on the exact requirements of the stream of commerce theory does not need to 

be settled here because Plaintiffs provide the evidence required to make the jurisdictional showing 

under either version of the stream of commerce theory, and the evidence provides the necessary 

ingredients for the exercise of personal jurisdiction consistent with due process. 

.

Additionally, this Court has held that the mere act of placing products on an online 

marketplace accessible by Texas consumers is sufficient to establish personal jurisdiction under a 

stream of commerce theory. See Seasons USA, Inc. v. SCS Direct, Inc., 2023 WL 5344342, *2 

(E.D. Tex. June 9, 2023) (holding that placing products on Amazon is sufficient contact because 

“without limiting sales to Texas, it is foreseeable that SCS's products may end up in Texas via 

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Amazon.”). As alleged in the Complaint, the Accused Products including the Captana system and 

VUSION ESLs are marketed on VusionGroup’s website. See, e.g., Dkt. No. 1 at ¶¶ 26, 34. This 

website is accessible in the United States, including in Texas. 

 Ex. 2 at 40:23–41:2, 46:7–47:20, 48:5–20; Ex. 1 at 

62:6–21. Therefore, like in Seasons USA, it is foreseeable that Moving Defendants’ products may 

end up in Texas because there are no restrictions limiting sales to Texas in addition to 

VusionGroup’s activity and locations in Texas. See Seasons USA, Inc. v. SCS Direct, Inc., 2023 

WL 5344342, *2 (E.D. Tex. June 9, 2023). 

Additionally, as discussed above, both Moving Defendants 

. See supra Section 

III.B.1. With respect to Captana GmbH’s

. Id. Additionally, 

VusionGroup GmbH . 

Id. 

Further, it is undisputed that Captana GmbH and VusionGroup GmbH 

Ex. 1 at 40:20–41:12; 50:12–17. 

. at 40:20–41:12, 50:12–17; Ex. 2 at 13:2–

11. 

 Ex. 2 at 13:2–11. 

. Ex. 2 at 13:12–19. 

Further, 

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 Ex. 1 at 61:15–21; 66:22–25; Ex. 2 at 10:2–16; Ex. 10. Similarly, Ms. Vittorio testified 

that 

. Ex. 1 at 99:7–12. 

Not only are the Moving Defendants

but as also discussed above, both entities

 Ex. 2 at 9:15–10:1, 53:12–21; Ex. 1 at 64:4–16; 

Ex. 3 at 12–13. For example, Captana GmbH 

 Ex. 2 at 9:15–10:1. Captana GmbH also 

. Ex. 2 at 53:12–21. VusionGroup GmbH employees 

Ex. 1 at 64:4–16; Ex. 3 at 12–13. 

 See e.g., Dkt. No. 38-1 at ¶¶ 

6–7; Dkt. No. 38-2 at ¶ 12. 

In view of the above, it is apparent that Moving Defendants 

 Moving Defendants are 

 and Moving Defendants’ activities in Texas were such that they 

should reasonably have anticipated being brought into court in Texas. This establishes that 

personal jurisdiction exists.

3. Exercising Personal Jurisdiction Over the Moving Defendants Would 

Not Offend Traditional Notions of Fair Play and Substantial Justice 

When a plaintiff establishes minimum contacts between the defendant and the forum state, 

the burden of proof shifts to the defendant to show that the assertion of jurisdiction is unfair and 

unreasonable. Dontos v. Vendomation NZ Ltd., 582 F. App'x 338, 343 (5th Cir. 2014) (citing Cent. 

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Freight Lines Inc. v. APA Transp. Corp., 322 F.3d 376, 384 (5th Cir. 2003)). It is rare to say that 

the exercise of jurisdiction is unfair after minimum contacts have been shown. Wien Air Alaska, 

Inc. v. Brandt, 195. F.3d 208 (5th Cir. 1999). The Fifth Circuit evaluates whether the exercise of 

specific jurisdiction is unfair and unreasonable by considering the following factors: (1) the burden 

on the nonresident defendant, (2) the forum state's interests, (3) the plaintiff's interest in securing 

relief, (4) the interest of the interstate judicial system in the efficient administration of justice, and 

(5) the shared interest of the several states in furthering fundamental social policies. Seasons USA, 

Inc. v. SCS Direct, Inc., 2023 WL 5344342, *2 (E.D. Tex. June 9, 2023). 

First, the burden on Moving Defendants would not be substantial such that the exercise of 

specific jurisdiction would be unfair and unreasonable. The Fifth Circuit has held that it is not 

unreasonable for foreign defendants to defend themselves in Texas if the defendants avail 

themselves of the benefit of the state’s market. Seasons USA, 2023 WL 5344342, *2 (citing Luv 

N'care, 438 F.3d at 474). As established in Sections III.B.1–2, Moving Defendants are aware that 

the Accused Products 

. See supra Sections III.B.1–2. Moving Defendants have 

therefore availed themselves of the benefit of Texas’ market and it is not unreasonable for Moving 

Defendants to defend themselves in Texas. 

Second, the state of Texas has an interest in adjudicating this matter. This Court has held 

that the forum state has a legitimate interest in adjudicating a dispute involving a defendant that 

hires Texas employees to work and sell goods in the state to Texas consumers. Seasons USA, 2023 

WL 5344342, *2 (citing Ruston Gas Turbines, Inc. v. Donaldson Co., 9 F.3d 415, 421 (5th Cir. 

1993).). Additionally, this Court has held that this factor favors finding that personal jurisdiction 

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exists because both Texas and the United States have an interest in enforcing federal patent laws. 

See AX Wireless LLC v. Lenovo Group Ltd., 2023 WL 7105701, *5 (E.D. Tex. Sep. 6, 2023) (“The 

second, third, and fourth factors favor jurisdiction because both Texas and the United States have 

an interest in enforcing federal patent laws and providing a forum for AX Wireless to efficiently 

pursue and resolve its patent infringement claims.”). 

 The importation, offer for sale, and sale of the Accused 

Products are central to Plaintiffs’ claims for patent infringement. 

 Ex. 1 at 24:24–25:1. Therefore, Texas has a 

legitimate interest in adjudicating this matter. 

Third, Plaintiffs have an interest in securing relief. While Moving Defendants do not 

dispute this, Moving Defendants argue that Plaintiffs’ interests will not be negatively impacted if 

Moving Defendants are removed from this case. See Motion at 10. However, it is likely that 

Moving Defendants have necessary information and documents relevant to this case. 

 Furthermore, Plaintiffs 

have an obvious interest in preventing patent infringement in Texas, which this Court has 

recognized as favoring jurisdiction. See AX Wireless LLC, 2023 WL 7105701 at *5. 

Fourth, exercising specific jurisdiction over Moving Defendants supports the efficient 

administration of justice. Discovery is ongoing. Therefore, exercising specific jurisdiction over 

Moving Defendants would allow Plaintiffs to access necessary information and documents during 

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the course of discovery without having to resort to unnecessary third-party discovery fights. 

Additionally, this Court has held that this factor weighs in favor of jurisdiction because both Texas 

and the United States have an interest in providing a forum to efficiently pursue and resolve patent 

infringement claims. See id. at *5. 

Fifth, the state of Texas has an interest in furthering social policies such as patent 

enforcement and discouraging patent infringement. See id. at *5 (“The fifth factor also supports 

jurisdiction because Texas and the United States have an interest in discouraging patent 

infringement.”). Moving Defendants argue that social interests of the United States and Texas are 

not offended by the dismissal of Moving Defendants. Motion at 11. However, this statement is 

incorrect. Texas, like every state in the United States, has an interest in ensuring that patent laws 

are obeyed. 

C. Personal Jurisdiction Can Be Established Under Fed. R. Civ. P. 4(k)(2) 

Even if the Court finds that the Moving Defendants do not have personal jurisdiction in 

Texas, which they do, exercising personal jurisdiction over the Moving Defendants is proper under 

Fed. R. Civ. P. 4(k)(2). Fed. R. Civ. P. 4(k)(2) recites that “[f]or a claim that arises under federal 

law, serving a summons or filing a waiver of service establishes personal jurisdiction over a 

defendant if: (A) the defendant is not subject to jurisdiction in any state’s courts of general 

jurisdiction; and (B) exercising jurisdiction is consistent with the United States Constitution and 

laws.” Fed. R. Civ. P. 4(k)(2). Here, Plaintiffs allege, and Moving Defendants do not dispute, that 

the district court possesses subject matter jurisdiction over this action pursuant to 28 U.S.C. §§ 

1331 and 1338(a). Dkt. No. 1 ¶ 11. Thus, the claims arise under federal law. 

With respect to the second requirement of Fed. R. Civ. P. 4(k)(2), the Federal Circuit has 

found that “the purposes of Rule 4(k)(2) are best achieved when the defendant is afforded the 

opportunity to avoid the application of the rule only when it designates a suitable forum in which 

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the plaintiff could have brought suit.” Touchcom, Inc. v. Bereskin & Parr, 574 F.3d 1403, 1415 

(Fed. Cir. 2009). Thus, where “the defendant contends that he cannot be sued in the forum state 

and refuses to identify any other where suit is possible, then the federal court is entitled to use Rule 

4(k)(2).” Id. (citing ISI Int'l, Inc. v. Borden Ladner Gervais LLP, 256 F.3d 548, 552 (7th 

Cir.2001)). Here, the Moving Defendants assert personal jurisdiction is improper in Texas but fail 

to identify any other state in which suit is possible. Motion at 11–12. 

Thus, the only element left for the Court to consider is whether “exercising jurisdiction is 

consistent with the United States Constitution and laws.” Fed. R. Civ. P. 4(k)(2). In that analysis, 

as Moving Defendants recognize, the Court “contemplates a defendant’s contacts with the entire 

United States, as opposed to the state in which the district court sits.” Touchcom, Inc., 574 F.3d 

at 1416 (quoting Synthes (U.S.A.) v. G.M. Dos Reis Jr. Ind. Com. De Equip. Medico, 563 F.3d 

1285, 1295 (Fed. Cir. 2009)). In other words, the Court assesses whether the (1) defendant has 

purposefully directed its activities a residents in the United States, (2) claim arises out of or relates 

to the defendant’s activities with the United States, and (3) the assertion of personal jurisdiction is 

reasonable and fair. Id. While the Moving Defendants assert that these elements are not met 

“because neither defendant has any contacts with the United States such that the exercise of 

jurisdiction over the defendants is consistent with Due Process,” as discussed above, these 

statements could not be further from the truth. 

The Moving Defendants have had 

. 

Additionally, individuals from the Moving Defendants 

. Ex. 2 at 9:1–5. 

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the Moving Defendants are 

, and for at least the Captana Accused Products, 

. 

Ex. 2 at 13:12–19. Further, 

. Ex. 2 at 11:6–25; Ex. 1 at 65:22–25; Ex. 10. 

That neither of the Moving Defendants are incorporated in or have a principal place of 

business in the United States is of no moment. See Touchcom, Inc., 574 F.3d at 1415–16 (holding 

that a federal court is entitled to use Rule 4(k)(2) if the defendant contends that he cannot be sued 

in the forum state and refuses to identify any other where suit is possible). Neither is required to 

establish that jurisdiction under Fed. R. Civ. P. 4(k)(2). See id. at 1412. 

which are by Captana GmbH, and the VUSION

ESLs, for which VusionGroup GmbH , that give rise to 

Plaintiffs’ claims of patent infringement in this action. See Dkt. No. 1 at ¶¶ 22–38. 

Lastly, for the same reason as discussed above, exercising jurisdiction over the Moving 

Defendants would be reasonable and fair. 

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Thus, even if the Court finds that personal jurisdiction does not exist in Texas, the Court 

should nevertheless deny the Moving Defendants’ Motion as personal jurisdiction is proper under 

Fed. R. Civ. P. 4(k)(2). 

D. VusionGroup GmbH’s Appearance in a Prior Litigation Establishes that 

Personal Jurisdiction is Proper in Texas 

VusionGroup GmbH attempts to distinguish its involvement in Hanshow Technology Co., 

Ltd. v. SES-Imagotag SA and SES-Imagotag GmbH Case No. 2:23-cv-00174 (E.D. Tex.) 

(“Hanshow I”) from this case by focusing on the fact that this action accuses the Captana Accused 

Products of infringement and includes Captana GmbH as a named Defendant. Moving Defendants 

tellingly ignore, however, that the VUSION ESLs are accused in both cases. See e.g., Dkt. No. 1 

at ¶¶ 24, 26, 32, 34; see also Hanshow I, Dkt. No. 1 at ¶¶ 24, 26, 52. Additionally, Moving 

Defendants cite to cases suggesting that a prior appearance does not necessarily waive personal 

jurisdiction in a future action within the jurisdiction. See Motion at 12–13 (citing Wapp Tech Ltd. 

P’ship v. Micro Focus Int’l, PLC, 406 F.Supp.3d 585, 594 (E.D. Tex. Aug. 13, 2019) and 

Rozenblat v. Sandia Corp., 2006 WL 678923, *3 (Fed. Cir. 2006).). However, the cited cases are 

inapposite. For example, the Court in Wapp Tech held that Defendant did not waive personal 

jurisdiction “by appearing in a previous, unrelated case filed in the same district.” Wapp Tech, 

406 F.Supp.3d at 594. In so holding, the Court focused on the fact that the prior case was unrelated 

to the case at issue. Id. However, the instant action is similar to Hanshow I because the two cases 

involve related parties and an overlap in accused products, which Moving Defendants admit. 

Motion at 13. Therefore, the factual underpinnings of the cited cases such as Wapp Tech do not 

apply here. 

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V. CONCLUSION

For all the foregoing reasons, Plaintiffs respectfully request that the Court deny Moving 

Defendants’ Motion. 

Dated: July 29, 2024 Respectfully Submitted,

 /s/ Boyd Cloern 

 Boyd Cloern

 Scott Richey

Katherine D. Cappaert 

Steptoe LLP

 1330 Connecticut Avenue NW 

 Washington, DC 20036 

 Telephone: (202) 429-3000 

 Facsimile: (202) 429-3902 

 bcloern@steptoe.com 

 srichey@steptoe.com

 kcappaert@steptoe.com 

 Jamie Lucia

 Benjamin Ho

 Steptoe LLP

 One Market Plaza, Steuart Tower

 10th Floor, Suite 1070 

 San Francisco, CA 94105 

 Telephone: (415) 365-6711 

 Facsimile: (415) 365-6699 

 jlucia@steptoe.com

 bho@steptoe.com 

 Hao Tan (IL Bar No. 6314119) 

 Shen Wang (IL Bar No. 6314224) 

 Peter J. Curtin (IL Bar No. 6332596) 

Arch & Lake LLP 

 203 N. LaSalle St., Ste. 2100 

 Chicago, IL 60601 

 Phone: 312-558-1369 

 Fax: 312-614-1873 

 Shenwang@archlakelaw.com

 HaoTan@archlakelaw.com

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 Pete_curtin@archlakelaw.com

 Geoffrey P. Culbertson 

 (TX Bar No. 24045732) 

 PATTON TIDWELL & 

 CULBERTSON, LLP

 2800 Texas Boulevard 

 Texarkana, TX 75503 

 Telephone: (903) 792-7080 

 Facsimile: (903) 792-8233 

 gpc@texarkanalaw.com

 

 Attorneys for Plaintiffs Hanshow 

 Technology Co., Ltd. and Shanghai 

 Hanshi Information Technology Co., 

 Ltd. 

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CERTIFICATE OF AUTHORIZATION TO SEAL

Pursuant to Local Rule CV-5(a)(7)(B), the undersigned certifies that the foregoing 

document and following attachments are permitted to be filed under seal pursuant to the Protective 

Order (Dkt. No. 41) governing this case. 

/s/ Boyd Cloern 

Boyd Cloern 

CERTIFICATE OF SERVICE

I hereby certify that a copy of the foregoing document was filed electronically in 

compliance with Local Rules. Therefore, this document was served on all counsel who are deemed 

to have consented to electronic service on July 29, 2024. 

/s/ Boyd Cloern 

Boyd Cloern 

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