NEW WORLD INTERNATIONAL, INC., NATIONAL AUTO PARTS, INC., Plaintiffs-Appellants
FORD GLOBAL TECHNOLOGIES, LLC, Defendant-Appellee
from the United States District Court for the Northern
District of Texas in No. 3:15-cv-01121-M, Judge Barbara M.G.
G. Oake, Jr., Oake Law Office, Allen, TX, argued for
Marotta, Hogan Lovells U.S. LLP, Washington, DC, argued for
defendant-appellee. Also represented by Jessica L. Ellsworth;
Frank A. Angileri, Marc Lorelli, Linda D. Mettes, Brooks
Kushman P.C., South-field, MI.
Prost, Chief Judge, Bryson and Wallach, Circuit Judges.
Bryson, Circuit Judge.
World International, Inc., and National Auto Parts, Inc.,
(collectively, "New World") appeal from a final
decision by the United States District Court for the Northern
District of Texas dismissing New World's declaratory
judgment complaint for lack of personal jurisdiction over
defendant-appellee Ford Global Technologies, LLC
("FGTL"). We affirm.
a wholly owned subsidiary of the automaker Ford Motor
Company. Both FGTL and the Ford Motor Company are
incorporated in Delaware and headquartered in Michigan. FGTL
does no business in Texas and neither maintains an office nor
has any employees in Texas.
does not make or sell automobiles or automotive products; it
owns, manages, and licenses intellectual property for the
Ford Motor Company. FGTL's portfolio includes several
design patents, including U.S. Design Patent No. D489, 299
("the '299 patent"), which claims the design of
a vehicle hood exterior, and Design Patent No. D501, 685
("the '685 patent"), which claims the design of
a vehicle head lamp.
licensed the '299 and '685 patents to LKQ Corp.
("LKQ"), an entity incorporated in Delaware and
headquartered in Illinois. The license agreement between FGTL
and LKQ designates LKQ as the exclusive licensee for the
importation and sale of non-original equipment aftermarket
products in the United States. LKQ does business in all 50
states, including Texas.
license agreement states that "LKQ has no right, title
or interest in or to the FGTL Design Patents" beyond
selling the aftermarket products as provided in the
agreement, and that LKQ does not have the right to grant
sublicenses. The agreement further provides that FGTL and LKQ
each operate as "an independent contractor in the
performance of each and every part of the license, " and
that neither "has the power or authority to act as
agent, employee or in any other capacity to represent, act
for, bind or otherwise create or assume any obligation on
behalf of the other party for any purpose whatsoever."
In addition, the agreement provides that LKQ may not
reference its relationship to Ford or FGTL in any of
LKQ's marketing materials regarding the royalty products,
and that LKQ must attach to each of those products a label
that reads "Non Original Equipment Aftermarket
Part." The agreement does not otherwise control
LKQ's marketing of the royalty products.
license agreement details the relationship between FGTL and
LKQ regarding infringement claims against third parties. If
LKQ learns of potentially infringing conduct by a third
party, LKQ must notify FGTL in writing. The agreement then
FGTL will have the right to determine what action, if any, is
to be taken in each such instance, but shall not unreasonably
refuse a request by LKQ to enforce the Ford Design Patents
against allegedly-infringing use in conflict with LKQ's
rights under th[e] [License] Agreement. If FGTL decides to
take any action at LKQ's request, LKQ agrees . . . to
become a party to such action if necessary, and to cooperate
with FGTL, in the prosecution of any such action or
proceeding involving any alleged infringement respecting
FGTL's rights in the Ford Design Patents.
license agreement also addresses potential third-party claims
of design patent infringement against LKQ based on LKQ's
sales of the aftermarket products. For such claims, the
agreement provides that FGTL will indemnify LKQ for any
design patent suits against LKQ initiated by third parties.
World is a Texas company with headquarters in Texas. In
September 2011, FGTL sent New World a cease and desist letter
accusing New World of infringing the '299 and '685
patents by selling various parts meant for use on Ford
vehicles. The letter informed New World that LKQ had been
granted an exclusive license to import and sell those
products, and that New World had not obtained the accused
products from LKQ in an authorized manner.
21, 2013, FGTL sent another letter to New World, providing
New World with a "partial list" of Ford design
patents and again requesting that New World cease and desist
selling various parts for Ford vehicles. FGTL also informed
New World that LKQ "may be able to assist" with New
World's "disposal" of the accused products, and
stated that "LKQ will contact you directly."
World requested a license to sell the accused products. On
June 11, 2013, FGTL responded that a license option was not
available; that FGTL had contacted its litigation counsel,
who would contact New World; and that FGTL had asked LKQ to
contact New World about the disposal of the accused products
in New World's possession.
2013, LKQ contacted New World "regarding the recent
'cease and desist' letter" from FGTL. LKQ asked
that New World call LKQ "to review the details of [New
World's] inventory" in order to "determine ...