Nordic Water Products AB v. Veolia Water Solutions & Technologies Support, 2:19-cv-00497

Background

Plaintiffs: Nordic Water Products AB (Sweden) and WesTech Engineering, Inc. (Utah distributor) seek a declaratory judgment of noninfringement and invalidity of U.S. Patent No. 10,188,971 (the ‘971 patent).
Defendant: Veolia Water Solutions & Technologies Support (France) is the patent holder and licensed Kruger, Inc. (North Carolina) as its U.S. exclusive licensee for the patent family covering the SuperDisc.
Procedural history: After a prior infringement suit and settlement over a related patent family, Veolia sent an infringement letter to WesTech in Salt Lake City alleging ‘971 infringement; Plaintiffs filed this declaratory judgment action in D. Utah.
Veolia moved to dismiss for lack of personal jurisdiction, improper venue, or lack of subject-matter jurisdiction; alternatively to transfer, stay, or decline declaratory jurisdiction.
Plaintiffs relied on (1) Veolia’s infringement letter into Utah and (2) Veolia’s exclusive licensing arrangement with Kruger doing business in the U.S. (including Utah) to establish specific jurisdiction.
Ruling: Court granted Veolia’s motion and dismissed the case without prejudice for lack of personal jurisdiction, concluding the letter alone and the unproduced licensing agreement were insufficient to render jurisdiction fair and reasonable.

Issues

Issue	Plaintiff's Argument	Defendant's Argument	Held
Specific personal jurisdiction over Veolia	Veolia purposefully directed enforcement activities at Utah by sending the infringement letter and by licensing Kruger (who does business in Utah)	Veolia only sent a letter and has an exclusive licensee; those contacts do not make jurisdiction fair or reasonable	Dismissed for lack of personal jurisdiction; court lacked fair/reasonableness showing
Sufficiency of infringement (cease-and-desist) letter	Letter into forum establishes minimum contacts and gave rise to DJ claim	Cease-and-desist letters alone are insufficient under Federal Circuit due-process precedent	Letter satisfied minimum-contacts prong but, by itself, is not a fair/reasonable basis for jurisdiction
Effect of exclusive license with Kruger	An exclusive U.S. licensee doing business in Utah ties Veolia to the forum and supports jurisdiction	Mere existence of a license without terms showing enforcement duties or control is insufficient; Plaintiffs did not produce the agreement or seek jurisdictional discovery	Insufficient: Plaintiffs failed to allege or produce license terms showing enforcement-related obligations, so license did not establish jurisdiction

Key Cases Cited

Jack Henry & Assocs., Inc. v. Plano Encryption Techs. LLC, 910 F.3d 1199 (Fed. Cir. 2018) (letters to multiple in‑forum parties and broader enforcement efforts supported jurisdictional analysis)
New World Int'l, Inc. v. Ford Glob. Techs., LLC, 859 F.3d 1032 (Fed. Cir. 2017) (cease‑and‑desist letter can create minimum contacts; license terms require close examination)
Silent Drive, Inc. v. Strong Indus., Inc., 326 F.3d 1194 (Fed. Cir. 2003) (policy reasons limit using demand letters alone to establish jurisdiction in patent cases)
Red Wing Shoe Co. v. Hockerson‑Halberstadt, Inc., 148 F.3d 1355 (Fed. Cir. 1998) (cease‑and‑desist letters alone often fail the fairness/practicality inquiry for jurisdiction)
Avocent Huntsville Corp. v. Aten Int'l Co., 552 F.3d 1324 (Fed. Cir. 2008) (letters threatening suit by themselves do not suffice for jurisdiction; look for additional enforcement‑related activity)
Breckenridge Pharm., Inc. v. Metabolite Labs., Inc., 444 F.3d 1356 (Fed. Cir. 2006) (exclusive license alone does not establish jurisdiction; examine license for litigation/enforcement rights)
Genetic Veterinary Scis., Inc. v. LABOKLIN GmbH & Co. KG, 933 F.3d 1302 (Fed. Cir. 2019) (licensee functioning as U.S. enforcer and license terms granting enforcement rights can support jurisdiction)
Autogenomics, Inc. v. Oxford Gene Tech. Ltd., 566 F.3d 1012 (Fed. Cir. 2009) (patentee’s own commercialization in forum is irrelevant to enforcement‑related jurisdictional analysis)
Int'l Shoe Co. v. Washington, 326 U.S. 310 (U.S. 1945) (minimum contacts due‑process foundation)
Burger King Corp. v. Rudzewicz, 471 U.S. 462 (U.S. 1985) (purposeful direction/availment and fairness analysis for specific jurisdiction)