Ebates Performance Marketing, Inc v. MyMail, Ltd., 5:20-cv-04768

Plaintiffs Rakuten Rewards (Ebates) and Cartera develop Chrome extensions (Rakuten: Get Cash Back for Shopping; SkyMiles Shopping Button). Defendant MyMail is assignee of four patents (ʼ838, ʼ070, ʼ263, ʼ863).
MyMail previously sued others in this District (the ooVoo cases) asserting two of the same patents; those cases produced claim construction and an invalidity ruling that is on appeal to the Federal Circuit.
On June 12, 2020, MyMail’s counsel sent Rakuten and Cartera letters with >20‑page claim charts, portions of source code, a license offer, a 12‑day response deadline, and a statement that files would be turned over to litigation counsel if there was no timely response.
Plaintiffs responded July 2, 2020, asserting non‑infringement and raising collateral‑estoppel/invalidity issues; MyMail did not substantively respond. Plaintiffs filed a declaratory judgment complaint (non‑infringement) on July 16, 2020.
MyMail moved to dismiss for lack of subject‑matter jurisdiction (no actual controversy) and lack of personal jurisdiction; the court denied the motion, finding an affirmative act and sufficient forum contacts.

Issue	Plaintiff's Argument	Defendant's Argument	Held
Whether an Article III case or controversy exists for a declaratory judgment of non‑infringement	Letters with claim charts, source code, deadline, and MyMail’s litigation history created a sufficiently immediate and real controversy permitting declaratory relief	Letters were ordinary pre‑suit communications or part of licensing negotiations; not an affirmative act sufficient for declaratory jurisdiction; filing was anticipatory	Court: Held SMJ exists — letters (detailed charts/code + 12‑day deadline + threat to involve litigators) combined with MyMail’s extensive enforcement history constitute an affirmative act under MedImmune/3M tests; licensing negotiations did not negate jurisdiction
Whether the Northern District of California has personal jurisdiction over MyMail	Prior enforcement in this district (ooVoo cases) plus the Rakuten‑addressed letter that targeted a forum resident suffices to show purposeful direction and relation to the claim	Sending letters alone (to an out‑of‑state entity) is insufficient; MyMail lacks continuous/systematic contacts with California	Court: Held specific jurisdiction exists — prior litigation in this district, failure to contest jurisdiction in those cases, and the targeted enforcement letter together provide materially related forum contacts; Burger King reasonableness factors favor exercising jurisdiction

MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007) (actual controversy standard and discretion to declare rights under “all the circumstances”)
3M Co. v. Avery Dennison Corp., 673 F.3d 1372 (Fed. Cir. 2012) (patent declaratory‑judgment requirements and affirmative‑act analysis)
Assoc. for Molecular Pathology v. U.S. Patent & Trademark Office, 689 F.3d 1303 (Fed. Cir. 2012) (injury‑in‑fact and traceability in patent controversies)
Radio Sys. Corp. v. Accession, Inc., 638 F.3d 785 (Fed. Cir. 2011) (ordinary cease‑and‑desist letters ordinarily insufficient for personal jurisdiction)
Avocent Huntsville Corp. v. Aten Int’l Co., 552 F.3d 1324 (Fed. Cir. 2008) (forum contacts materially related to patent enforcement control jurisdictional inquiry)
Xilinx, Inc. v. Papst Licensing GmbH & Co. KG, 848 F.3d 1346 (Fed. Cir. 2017) (specific jurisdiction framework and reasonableness analysis in patent cases)
Int’l Shoe Co. v. Washington, 326 U.S. 310 (1945) (minimum contacts standard)
Burger King Corp. v. Rudzewicz, 471 U.S. 462 (1985) (reasonableness factors for exercising specific jurisdiction)
Breckenridge Pharm., Inc. v. Metabolite Labs, 444 F.3d 1356 (Fed. Cir. 2006) (focus on whether enforcement contacts were purposefully directed at forum residents)
Safe Air for Everyone v. Meyer, 373 F.3d 1035 (9th Cir. 2004) (distinction between facial and factual Rule 12(b)(1) attacks)