NOVA DESIGN TECHNOLOGIES, LTD. v. WALTERS et al
Filing
71
MEMORANDUM. ( SIGNED BY HONORABLE MARY A. MCLAUGHLIN ON 10/24/11. ) 10/25/11 ENTERED AND COPIES E-MAILED.(gn, )
<![CDATA[
IN THE UN:TED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF
NOVA 9ESIGN TECHNOLOGIES,
PE~NSYLVANIA
CIVIL ACTION
L:'D.
v.
r·1ATTHEi\f K, WALTERS t et al.
NO. 10-76l8
MEMORAND;JM
HcLa'..lghlin, J.
In tl:is action, Nova Design Technologies, Limited
("Nova H
)
filed suit against Matthe...; K. Walters, Dale E.
Walte~s,
and Brian G'..lerra ("individual defendar:.ts"), as well as
Respironics. Inc,; RIC Investments, LLC ("RIC"); Philips Ho:ding
USA,
Inc.
("Philips"); Respironics Novametrix, LLC; and
Children's Hedic;;tl Ventures, LLC ("CMV")
defendants"),
("corporate
The action arose from the alleged use of Nova's
confidential. lnformation by the individt.:al defendants, as
officers of a company named Ornni Therrr, , to apply for a pater.t
used in ir.fant heel ~..· armers not" marketed and sold by eMV,
The
plaintiff brought claims for breach of contract, fraudulent or
negligent mis.!'cpresentation,
fraudulent concealment or
r.o~disclos~re,
co~version,
trade secret misappropriation,
correction of
invento~9hip,
patent 1_nfringement, unjust
em:ichmer.t, and violation of the Sherll'.an Act,
The defendants RIC and Philips have filed a Renewed
Motion to Dia:nisG ;,mder Rule
~2(b)
(2) for lack of perscr.al
-iurisdiction,
-
.
and the olaintiff has filed a Hot ion for Leave to
File a SUT-reply to the defendants' motion.
The Court will gran:::
the defendants' motion ar.d deny the plaintiff's motion.
In 1992, Nova, through its research scientists,
developed a new trigger for a heat pack composed of circular
ceramic objects that can be squeezed or rubbed toget!1er while
suspe~ded
in a supercooled aqueous salt solution, resulting in a
crystallizatio:1 process that gives off latent heat,
'The trigger,
when placed inside a flexible plastic bag containing such a
solution, e.g., sodium acetate, represented an advance :n
product design of heat packs,
Heat pacKs are used,
~he
fer example,
to warm hands at outdoor sporting events and ir. neel warming
packs used on infants
had
~sed
i~
hospitals.
Earlier heat pack designs
triggers that were less stable or sharper than these
developed by Nova, and thus placed the heat packs at risk for
puncture or
unin~er.tional
activation when dropped.
Nova zought
to pat:ent the rew trigger and was issued U,S. Patent No.
5,275,156 in January. 1994,
In
~995,
Am. Co~pl, ~~ 19-20.
a researcher at Nova, Jaime SchIer!f, began to
The Court :imits i:::8 discussion of the facts to those
relevant to the instant m~tions.
Where they are not drawn from
the Amended Complaint, the facts stated are taker. from
declarations attached to the defendants' motio:)s and arc
uncontested.
1
-2
develop a:) non-metallic aluminum oxide "sandpaper trigger'" that
was even more effect':"ve at
~ni'Ciating
crystal:ization and
avoiding preactivation, and that could be used wit:h a range of
sodium acetate concentrations.
Scnlorff contacted Omni Therm, a
heat pack retailer, and asked lts officers Dale and Matt Walters
whether Omni
Ther~ wo~ld
be interested in purchasing or
the new !"lon-metallic sar:.dpaper trigSers.
interest and began negotiations to
13,
The Walters expressed
deterrrL~. ne
Walters and Nova signed a Confidentiality
l~ce~s~ng
l:ow tc proceed; the
Agreemen~
on October
!998 so that Omr:.i ':'herm could evaluate Nova's trigger
technolo9:l.
per~od
desi.gn..
The Confiden':iality Agreement cov'ered a three-year
or u:1.Lil Nova received a patent for the sandpaper-trigger
Around that t:lme, Matt: walters told Schlor!! tha;:: Omni
Therrn sold infant heel warmers t8 Respironics and/or CMV.
.~ fI~
Througho"Jr.: the end of 1999 and the beginning of 1999,
Walters a:ld Schlorff engaged in negotiations over Omni Therm's
purchase or use of the sandpaper triggers.
Negotiatio:18 broke
down over price al-ound Febrc.ary 24, 1999 I at which poi:lt Nova did
not hear" from
Om~i
T1:erm for over 18 months,
reopened in the =all of 2000,
a~d
Negotiations were
advanced to the point where
Matt Walters told Schlorff that Omni Therm would order and pay
for 20,000 t!"iggers, although :;[ova later expertenced some
difficulty with the production of
3
tr~ggers
to Ornni
Tr.el~'S
specifications,
o~
~ ~~
25··41.
March l6, 200l, the Walters engaged counsel to
prepare a patent application ('" 295 Application"} for a heat pack
with a sandpaper trigger without inform:"ng Nova, which \;he
plaintiffs allege was in violation of the Confidentiality
?he' 295 Applicatior. list.s Ma-:t 'rlalters as the
Agreement.
By the middle of 2001, Omni Therm began to make heat
inventor,
packs with aluminum oxide sandpaper triggers.
A silr.ilar
applicatio::l ('''591 Application") was fi1ed in November 20D1,
listing I>1att
Wal~ers
as the i!1.ventor.
The '59:1. Application was
amended to assert priority as of the '295 Application's filing
date, anc on April 12, 20e5, Wa:'ters was ult.imately granted u.s.
Patent No. 6,878,157 ('''157 Patent").
Id""
42-44 , 48-49,
57
58.
In 2002 r Nova began to scI::" heat packs \Hth the
a::'uminure oxide sa:1dpaper trigger developed by Schlorff,
plai:1tiff alleges that Respironics and/or
t:laking
I
purchasing, impor>::ir:.g
I
CWif
The
have also been
and/or selling infant heel ...; armer
heat packs nade with a sodium hydrate solution and sandpaper
trigger for several years and sold under a "Heel Sr:.uggler" mark.
The only defer.dants alleged to have sold heat packs ur.der the
"Hee1 Snuggler" l1',ark are eNV a!1d Respironics.
Xu..£.,
~~
21, 64 - 66,
Omni 'T'herm was the wholesa::'e provider of heel warmers to
Respiro:lics
'I
through Children's Medical Ventures" ur.til i::s
-4
acquisition by Reapironics.
Am. Compl. Ex. K.
Tt:e plaintiff notes that "Heel snuggler" heat packs
state its manufactu:::e by CMV and include a Philips name and mark..
The plaintiff incl\lded website printouts advertisi:lg and offering
Snugg~er
the Heel
marks.
for sale under Respironics, Philips, and CMV
The Heel Sr:.uggler ma:::k was issued to RIC Investrr,ents on
July 12, 2005 under U.S. Registrat::..on No. 2,967,826.
l£.L.
~1~1
66
68.
Nova alleges that Respironics,
Ph~lips,
RIC
Investments, Respironics Novametrix, and/or C'MV sold over one
million Heel Snuggler heat packs annually, and
tha~
the Heel
Snuggler infringes on tJle '157 Patent, which the plaintiffs
contcnd
p~operly
belongs to sc.':11orff.
Matt Walters is alleged to
have licensed or so.:.d the '157 Patent to Resp:"ronics, R::i:C,
Respoiron:cs Novametrix, or CMV, either directly or through the
11 69
sale of certain assets of Omni Thcrrr. on May 15, 2006.
Id.
74, 78.
Pa::ent
CM\;".is the currer.t and sole owner of the
'~5 7
purcrJ.ant to an Asset Purcl1ase Agreement between Omn.i Ther:n and
Cf.1V dated May =-5, 2006.
co~trols,
CMV is also solely responsible for
J
and
the narketing, manufacturc, and distribution of heel
warr:lers bearing the "Heel. Snuggler" tT'.ark.
Decl. Of t"lilliam
Thompson, Renewed Mot. to Dismiss Defs. Ex. 9
~IC
Invest~ents,
1~
3, 5,
LLC and Philips Holding GSA, Inc.
("moving defendants") clarified their corporate structures and
-:;::
relationships to the forum in a series of sworn declarations
attached as exhibits to their motions to dismiss and at the
request of the Court following a hearing on May 9, 2011.
Oral Arg. 58; 8-60: 25,
Tr.
The Cou!:'t summarizes the relevant
characteristics of each moving defendant as alleged in the
cO'31plainc ar.d fro:n und::...sputed averments of the decla.rations
appeariJ:1g in the Renewed Hotion to Dismiss.
Pl:ti tWJl
A,
Philips, a
Delawa~e
is a holding company
corpoya~1on,
with its prir:.cipal place of business in Andover, Massachusetts.
Philips directly or indirectly owns defendants Respironics,
Respironics NoV'amterix, RIC, and CMV.
Philips does not owa any U.S. patents.
co~trol
over 1tS subsidiaries by using
division or exclusive distrtbutor.
?hilips has ::10 employees.
Phil~ps
the~
does not exercise
as a marketing
Although Philips and CNV have
some o:!:ficers in common, managerr.ent and financial f ... ncticns are
separated.
Philips does no':: derive any revenue from products
sold or used in Pennsylvania.
Decl. of Joseph :::nnamcrati, Mot,
to Dismiss Def. Philips Holding USA, Inc.
("Ph:l.lips Mot,")
J
Ex. B
~~ 3-16.
Ph~lips
is a whol:y-owned subsidiary of
KO::1inkl~jke
Philips Electronics N. V., a pub 1 icly-held company, wl:ich owns the
"Philips" mark registered in the United Stat.es.
US.~,
?hilips Holding
Inc.' s Rule 7.1 Disclosure Stateu\ent (Docket No. 25).
The
"Philips" and "Heel Snuggler" marks appear, along with
"Children's Medical Ventures," on the Hee 1 Sr:ugg ler product:.
Am,
Compl. Exs. J, K.
B.
ErC
RIC, a Delaware corporation, is a holding company whose
predecessor (RIC Investment.s, Inc.) was cyeated to har:.dle the
licer.sing of intellectual property to its subsidiaries and other
RIC's prir.cipal place of business is in Delaware.
businesses.
RIC is an "indirect subsidiary" of R.espironics, Inc.,
wholly o"'t'lned by Philips.
wh:'~ch
is
RIC does not manufacture, sell I o::fer
to sell, or import any products
i~ ~he
United States, nor does it
market or advertise any products in the United States.
RIC and
em have sorre officers in comnon t but maintain separate
~anagement
ar.d accQunting records.
RIC derives
~o
revenue from
the sale of any products sold by any other defendant jn the
instant action.
Decl. of Kenneth J, Kubacki, Mot,
Dcf. R::;:C Ir:vestments, LLC ("RIC Mot,")
,~ 3
7,
{Dock.et No,
31)
I
Ex, B
12-13.
In July 2005 r R=C regh>tered the
Snuggler" wit!1 the U.S. Pate;)t
cont.int:.es to own the mark.
Dism2ss Defs.
~Heel
to Dismiss
Phi~ips
Snugg~er#
a~d
t~ademark
for "Heel
Trademark Office, and RIC
Pl. 's Resp, to Renewed Mot, to
& RIC (Vocket No. 65), Ex. 1 at 1.
mark appears
O~
The
the heel warmer products that the
plair-tiff alleges infringes the '157 Patent {which is allegect
-7
~o
be owned by Schlorff, the Nova researcher) .
C.
Mptiqnii---.-tO Dismiss
Philips and R'::C separately moved on March 21, 201l. to
dismiss the complaint against tl:em fer lack of
perso~al
jurisdiction, each asserting that they did not have enoGgh
contacts with
31-32).
Pennsylva~ia
to sustain jurisdiction (Docket Nos.
The Court held oral
argt.~ment
on these notions {among
others) and the parties agreed to seek a resolution of the
jurisd:"ctl.onal issues througl: the provision of declarations
clarifying the re:ationships of the corporate defendants to one
another and the prod,",cts at issue.
Tc
Oral ArS. 57 - 59.
The
parties were directed to update the Court by July 1, 201: as to
the status of discussions
affidavi~
rega~ding
the preparation of ar.
by RIC and Philips describing
~heir
relationships to
the other corporate defendants, to the '157 Patent, and to the
Heel Snugglers product, with an eye to voluntar.:'.ly dismissing '.:he
moving defendants.
The moving defendants conferred
wi~h
cot.:nsel for the
plaintiffs a::1d provided dec::"arations stating that lle":'ther RIC nor
Philips has had any involvement: ir:. the manufacture, sale, or
distribution c: the Hee=- Snuggler product, and that CMV is the
sole entity
ins~s!::ed
~esponsible
upon
at
for
~hose
activities.
The plainciff
declaration that RIC and Philips were not
tnvolved in the licensing or control2-ing the quality
-8
0::
goods
bearing the "Philips" or "Heel Snuggle!''' marks.
also sought
informat~on
The plaintiff
demonstrating that Mate Walters had
assigr:ed the '157 Patent to Omm.. 'J'herm and/or CMV,
Nhen this d2.d
not resolve the dispute regarding the Court.'s jurisdictio:1 over
RIC and Philips, those defendants filed a joint Re:1ewed ,Motion to
Dismiss.
Renewed Mots, to Dismiss Defs, Exs. 5, g, 9.
Officers
RIC and Philips slwmitted add.:..tional
declarattons seating that neither company had possessio;) or
contro::' over documer:.ts relating to the 1998 Cor:fidentiality
Agreement, claims by Schlorff regarding the
sandpaper trigger, or the '157 Patent.
developmen~
of the
Defs.' Reply Br. to Nova
Design's Resp, to Renewed Mot. =0 Dismiss Oefs"
Exs. 2-3,
The
plaintiff reqaested permission to file a sur-reply to the Renewed
t4otion t.O Disr:liss to inform the Caur:: of the information it has
not received from the moving defendants in jurisdictional
discovery.
Specifically, the plaintiff seeks information
regarding the individuals controlli!1.g -;:he qaality of the "Heel
Snuggler" mark, prosecut;:"on and enforcener:t of the '157 patent,
:nar~eting
infor:natio:l with respect to the Hee::' Snuggler products,
and any licens':'ng agreements with respect to the Heel Sm..:.gg:er
and Philips marks.
PI.'s. Mot, for Leave to File a Sur-Reply
{Docket No. 68) at 2.
II.
Discussio:J.
Because :::he qc.e.c::icn of jurisdiction is "intimately
:lnvolved with the subs'::ance of the patent laws," a district court
faced with a patent infri:r:.gement suit applies the law of the
Federal Circuit when analyzing the existence of personal
j1.lrisdiction,
F.3d 1324, 1328
Avocent Huntsville Corp. v, Aten InVl Co"
(Fed. Cir. 2008)
(quoting Akro Corp. v.
F.3d 1541, 1543 (Fed. Cir. 1995)}.
552
Lu.~er,
45
Where a finding of patent
infringement is "a critical factor in determining liability on
the
~on-patent
claims$" Federal Circuit law should apply.
Breckenridge Pha:r.m,
I
Inc. v. i1etab91ite Labs. Inc.
:356, 1362 (Fed, Cir. 2806).
t
444 F, 3d
Here, the facts that are relevant
to infringement are also likely to resolve tl:e non-patent claims
of misappropriation and misrepresentation, a:1d so the Court
applies Federa: Circuit law to the question of jurisdictio::1.
:'he Court's determination of persona: jurisdiction over
these out-or-state de::endants is dependent upon two inquiries:
\ 1) whet.her P0n11sylvania s long-arm statute reaches the
f
de=endants; and (2) whether the assertion of personal
jurisdiction compo:!:"::s with constit'..n;:ional
AVQcent,
not~ons
of due process.
552 F.3d at 1329.
Pen~sylvan~a's
long-arm statute is coextensive with the
lirn:'.'::.s of dee process, so the COl.;.rt' g inquiry collapses into a
Single inquiry, whethey the assercion of
and Philips comports with due process,
§
5322(b;.
ju~isdiction
42 Pa. Cons. Stat.
In a patent case, the United States
-:0
over RIC
Cou~t
of Appeals
for the Federal Circuit
~nstructs
district courts to examine
three factors in determining whctner the exercise of jurisdiction
over an out-oi-state defer:.dant satisfies due p::.:'ocess.
factors are:
These
(l} whether the defendant "purposefully directed"
its activities at forum residents;
(.2) whether the cla!m "arises
out of or relates to" the defendant's forum activities; and
(3) whether the assertio!1 of personal jurisdict:ion would be
Inc.~t
326 F.3d 1194, 1202 (Fed. eir . .2003).
These factors
correspond to the "minirr.um contac'::s" and "fair play and
subs,:antia: justice" prongs of the International Shoe due process
analysis.
316
ld.; see also Intll shoe v.
~asbington(
326 U.S. 310,
(1945)
The plaintiff's burden is =0 establish that the
defendant has minimum contacts with the
foru~;
in addition,
where the district court's disposition as to
the personal jurisdictior: question is based
on affidavits ar:d other written rnat€:::,ials in
the absence of an evidentiary hearing, a
plaintiff need only to make a prima facie
showl.ng t~t the defendants are subject to
persor.al jarisd~ction.
In the procedural
posture of a motion to dismiss, a district
court must accept the uncontroverted
allegations in the plaintiff's cow.plaint as
true and resolve any factual conflicts in the
affidavits in the plaintif.f.'s favor.
El"~c.§,
for
Cir, 2003)
J;.~.aging,
Inc.
v.,~~oylel
340 P.3d 1344, 1349-50 (Fed.
(internal citations omitted} ,
-11
A.
l'hi2..i;gs
Philips is the direct parent company of defendant
Respironics, Inc"
and through it, partially OW::1S RIC and fully
owns Respironics Novametrix, LLC.
Respironics Novametrix in turn
owns CMV, the owner of the '15'7 Patent and manufacturer,
marketer, and seller of the Heel Sn'..lggler product.
Philips is a
Delaware-incorporated holding company with its principal place of
business
i~
Massachusetts,
It neither
manufact~res
nor sells any
products in Pe:msylvania, nor derives any rever:ue from the
products so2d by its subsidiary
~J.
The only contact that the plaintiff a:leges Philips has
with Pe:1nsylvania is through its ownership of the subsidiaries
alleged to have manufactured inf.:-ingir:.g goods and misappropriated
trade secrets.
The plaintiff makes no specific allegations that
Philips engaged in any acts or or:lissions within or directed at
the forum/ let alone that those contacts gave rise to the claims
set
fo~th
in the
A~er:ded
Complaint.
The most that the
plaint~ff
alleges wit!-l respect to the activities of Philips is that through
its relationship with
Respiro~ics
and CWV as their parent holding
company, the forum activities of the subsidiaries should be
~mputed
to the defendant.
The Court of Appeals for the Federal
CirGui~
has not
specifically articulated a test for imputing the contacts of a
subsidiary
corporatlo~
to its parent for
-12
p~rposes
of
jurisdiction,:2 so the Court
Third Circuit.
tur~s
to authority from within the
The variet:y of t:ests deve:oped to analyze the
parent-subsidiary re:atiQnship have all focused on U:e extent to
whj.ch the subsidiary performs £u:1ctions ':"n the forum that t:.he
parent wO'..lld otherwise have cO::1d:.lctea,
Moto!;,. of Am ..
See
Gal1aghe..+~_!.
Inc., 781 F. Supp. 1079 {E.D. Pa. 1992;
three related lines of cases discussing the issue).'
Mazda
(describing
These tests
are generally consistent with the agency theory of jurisdictior:
articulated recently by the Court of Appeals for the Third
Cir. 2008)
{ge~eral
jurisdiction wi:l not extend to the parent
~ But see 3D Svstems, Inc. v. Aa,~otech Labs. { Inc., 160 F. 3d
1373, 1380-81 (Fed Cir. 1.998) (noting the FedeY"al Circuit's
s::rcr.g presumption of upholding the corporate ferm in declining
to impute subs~diary's contacts to the parent in analyzing
jurisdiction, and citing Third Circuit precedent); SE;.~~
D' Jamoos !?'.?:<: :r.el , ..JEstate of Wei.nwroff y. PJlat;.us ~ir£raft Ltd.,
556 F.3d .94, 108-09 (3d Cir. 2009) (testing personal ]"Jrisdicticn
of a parent company on a principal~agent basis, where the agent's
activities n are of such a character as to amount to doing
business of the parent") (quo:::ing Curtis Pupl'g Co, MY~.§J;i~l,
302 F.2d 132, 137
(lOoh CL. 1962)).
:; The test adopted by '.:he ~.;,allaghex· cocrt f:'nds i:nputation
appropriate where the subsidiary pe!."for:ns "functions that, but
for t~e existence of ':he subsidiary, the parent would have to
undertake." Id..~ at 10S5 (describing these activities as "vital
to the survival or the success of the parent").
In other words,
inp;Jtat::'on is appropriate where the subsidiary substitutes for
the parent in the forun. Qtl1agher explicitly contrasted such
relationships to that of a holdir.g company, where "the subsidlary
is not performing a f"..1nction that the parent would otherwise hays
had to perform itself .
I~ such a case, imputing
jurisdictional contacts would be irnpyoper.ff Id.
- 1.3
unless the plaintiff chows control of the subsidiary).
The plainciff here has failed to allege facts showi!1g
that Respiro:lics
O~
eM".? conducts activities in the forl.,~m thaT:
Philips would otherwise have conducted itself.
no~
The plainti:f has
alleged that Philips directs the activities of its
subsidiaries.
The
plain~if!
has not controverted the defendants'
supporting declaracioI:s tha::: Phili9S exercises no control over
the acti vi ties c:: CHV or Respironics. >I,
Where a mere holding
company-s'J.bsidiary relationship exists, the subsidiary's contacts
with the forum should not be imputed to the parefit absent
al~egations
showi~g
not be respected.
why the
distinc~
corporate structures should
The plaintiff has not ffiade those allegations
here, and the Court finds that no personal jurisdiction exists
with respect to Philips based on the activity of its
subsidiaries.
For the sarr.e reasons, exercisir.g personal j urisdi.ctio;l
on the basis of "continuous and systematic genera1 business
contac~s"
is inappropriate.
See. e.g.,
Helicopter~iom~les
,. :'he plai:1tif:; had argued earlier in this matter that
ovey the "Phllipsfl mark appearing alongside that of CMV
on the Heel Snuggler and on the Respi:.;:onic6 web site might
s·..1PPOyt ':he exercise of jurisdiction. Pl.'5 Resp. to De:'s.'
Mots, to Dismiss (Docket No. 41) 7 & Ex. 3. Furthe~ discovery by
the plaintiff detE':n'lined that the 1?hi:ips mark does not belong to
::he moving defendant bu;: to its nonpart.y parenti Koninklijke
Phi':'ips Electronics N.V. :PI,'s R€Sp. to Je:s.' Renewed Hot, to
co~trol
D!s~iss
(Docket No, 65) Bx, 1 at 4-5,
-14
Qg._s.;;S?:o~pi.L_ .. ~,A.
v, Hall, 46 U.S. 408, 415-17
J:'lt'l Shoe, 326 U.S. at 3:20).
(1984)
(citing
':he plaintiff is unable to allege
facts stating a prima facie case that such contacts exist, either
directly by Philips or through !ts subsidiaries,
peg Kehm Oil,
The Court w111 grant the defendants' motion.
537 F,3d at 300.
with respect to ?hilips.
E.
Rre
Tr.e plaintiff initially arg'..1ed that jurisdiction could
be found on the basis of RIC's holding (and licensing or other
derivative '-l13e; of ::he 'l57 Patent.
The defendants' declarations
and the Asset Purchase Agreement documer.ting the transfer of the
'157 Patent from Omni Ther:n to CMV
sale
OW7~er
dcmonGtra~e
that CMV is the
of the '151 Patent, not RIC, and the
alleged otherwise.
plai~tiff
has not
'The plaintiff relies on arg'l,.lments that "there
is no way to know if l?:'ilips Holding or RIC were in the chain of
ownership of t.he '157 Patent,"
Yiot. to
0ism~ss
5.
pl.'s Resp.
7he plaintiff cannot
to Oafs,' Renewed
~eet
its burden through
saggestions of such a rela<:::ionsh.tp without alleging how any
intermediate ownership shows that RIC "p'.lrposefully directed its
act:.. vi ties" at the forur:!.
AutqgellQmics
'r.ech, Ltd"
10~8
~ir.g
cor~,
566 F.3d 1012,
v,
Rudzewic~,
I
~Jnc.
v. Oxford Gene
(Fed. Cir. 2C09:
(quoting Burger
471 U.S. 462, 472 (1985)).
Nova also seeks to assert the exister:ce of personal
-15
jt.;.rl.sdictlon over RIC because of its conduct respecting the use
of the "Heel Snuggler" trademark by eMV.
The plaintiff argt..<es
that "a licensee's t!se 0:' a mark inures to the bene::it of che
licensor-owner of the mar!;:," and that licensing the Heel Snuggler
mark for CHV's use is in fact ar: activity conducted. for the
benefit of RIC.
PI.'s Reap. to Defs.' Renewed Mot.. to Dis:uiss 6
(citing Lar.ham Act
§
5, 5 :J.S.C,
§
lOSS}.
Nova argues that RIC
is subJect: to a statutory duty to control the q:.lality of goods
bearing the mark and tr.at such control demonstrates the
"purposefal availment" required to establish specific
jurisdiction. s
Nova's argument fails for two reasons,
:E"irst, it::: canno::: be
sa~d
that the types of claims
asserted by the plaintif=, for example,
pa~ent
~nfringeme~t,
fraUdulent mis:::epre.sentation, and Sherman Act violations, I'arise
out of" RIC's activities ic Pennsylvania; indeed, RIC conducts
business In Pennsylvania.
~o
The Court r:otes, but does :lot decide,
that only the clal.m for unj-Jst e::'lricr.rcent could plausibly be
The plaintiff apparently Was will:'ng to volur.tarily
RIC and Philips provided the moving defendan=s drafted a
declaration stating ;:hat they "have not been and are not now
involved in licensing the HEEL SNUGGLER or ?HILI?S marks, ar.d
have taken no part in authorizing the use of or controlli:lg the
quality of the infant heel warmer goods sold under these marks,"
Defs.' Rer:ewed Mot. ':0 Dismiss Ex. 4 (internal qaotations
oreittedl. The defendants argue that providi~g such a disClaimer
could be prejudicial to their ability to police the use of the
mark. 19~ at 2 n.2. The COUyt concludes that proof of the
lice~slng activity is not essential to resolve the questio~ of
jurisdiction.
S
dism~ss
~16~
directed at RIC in connection with its actions in Pennsylvania.
Even so, under the plaintiff's allegations, the
defe~dants
and
their ho:dtng companies would be unjustly enriched whether or not
the infringing products bore the "Heel Snuggler" mark.
Second, Federal Ci::::cuit l.aw holds that lice:.1sing
activity, standing alone, is ins'.lfficient to sustain jurisdiction
over a nonresident defendant.
B09kersQn-~alb~rstadt,
1998).
In R¢d
~ing
See Red wing Shoe Co) v.
Inc., l49 F.3d 1355, 1361 (Fed. elr.
Shoe, the p:aintiff asserted that the
district court had persor.al jurisdiction over the defendant
because of three warning letters it sent to the
(a} suggested the plaintiff was
man~factu~ing
plai~tiff
that
products that
infrir.ged the defendant's patent and {b) offered to negotiate
nonexclusi ve license terrr,s"
Fu:::.'ther, the plaintiff argued that
jurisdiction was proper because the defendant had thirty-six
licensees of its patent selling p!:od'Jcts in the forum, many of
which maintained reta:"l stores in-state,
rd. at 1355-58.
The district cou;c::: gra:lted the defendant s motion to
f
dismiss for lack of personal jurisdictio!1.
The Federal Circuit
affirmed l noting that even i= the plaintiff's
declarato~y
judgmer:t action arose out of the defendant's cease-and desist
lettars, the "fair play and substantial justice" prong of the
:Burger +s.;i.r..g analysis required the court to acknowledge t.hat ::hc
defendan'C shot.:ld not have been subject to s'J.it simply becaL:se it
-17
asserted its intellectual property rights,
Further, the court
found that the de':endant! s re.....enue stream der':"ving from its
licensir:g activity was "irrelevant" and "not \constltutionally
cognizable.'"
J_~
at :'361-62 (qaoting
world-Wi~
Volkswage:1, 444
U,S, at 299}.
The plaintiff seeks to distinguish Red Wing Shoe
because that case involved
pa~ent
and not trademark licenslng.
The plaint.iff argues that because of a heightened duty to monitor
product quality that attaches to trademark ownership, RIC has the
requisite minimum contacts wite Pennsylvania.
In spite of these
differences, the Court finds the reasoning of :R.ed
equally applicable to the instant case.
No~iaJ
w~ng
Se~~~~,
578 F. Supp. 2d 740, 751 (E,D, Pa. 2008)
Shoe
a;~lysis
W~ing
Shoe
Farina v.
(applyir.g the Red
to a trademark suit), af!'Q on other qrQunds,
625 F.3a 97 (3d eir. 2010}.
Indeed, -:he Red Wi:1q
st~
exercised regular oversight in the forum with respect
defe:1dant
>;'0
its
intellectual property and had significantly more licensing
"contacts" wit:h
t~e
forum than ca:1- be alleged here.
A!1d altho1.lgh
RIC and CMV are related entities (through Philips}, the plair:.tiff
canno': allege that RIC direc':ly controls CMV.
~doir.g
Thus, R:C is
business with a company that does business in
~the
forum]," which canr:ot of itself give rise ::0 a findir:g of rrtinim'.:lm
contacts.
Red Wino: Sh.Qst,
148 F.3d at 1361.
Without more, the plaintiff cannot meet its burden of
-18
maki:1g a prima facie showing that the Court has personal
jur~sdiction
~IC,
over
~he
Court, upon resolving any factual
conflicts from the affidavits in favor of the plaintiff, car-not
conclude that through its licensing activity alone RIC has
suffic:'ent contacts wi::h Per.cnsylvania to s'Jstain jurisdiction.
The
Co~rt
will, therefore I grant the defendants' motion with
::-cespect to RIC.
C,
The Plaintiff's Mot.ion fOJ; Leaye to PiA-€! a s"._n::::-Reply
Finally, the plaintiff
~ove6
for :eave
~o
file a brief
in sur-reply alleging that the de=endants have not produced
enough information in jurisdictional discovery for it
~o
showing required to sustair. a finding of
over the
rr.ov ing defendants.
jurisd~ction
make the
Fer example, the plaintif f argues in i <cs
motion that. "the ('oxpora1;c Defendants [sic] responses show that
at ;"east RIC is more thar: a mere holding company, a!1d has engaged
in acts t:l.at avail itself to this Court'.s jurisdiction."
Mot. for Leave to File a Sur-Reply l.
Pl.' s
However, the plaintiff
does not specify what U:ese statements are or how they
demonstrate the existence
0:
jurisdicticn.
The plaintiff further a::::gues that before the Renewed
Motion to Dismiss is decided, it requires responses to discovery
requests relating to (a) control of the "Heel Snaggler" and
"Philips" marks,
(b) efforts to prosecute and enforce the '157
-19
Patent, and (el how the Heel Snuggler product was
defendants argue that the
plaintif~/s
~arketed.
The
requests reveal no new
factual allegatio;u;;; on the issue of jurisdiction, and com:end
that they have substant::"a11y complied with the rercainder of the
plaintiff's requests.
The Court concludes that even if the
in!orma~ion
doc~ments
and
the plaintiff seeks revealed that RIC aGd Philips
were heavily involved i::1 controll ing the use and qt:.ality of goods
bearing the "Heel S:luggler" and "Phl.lips!f marks, such revelations
wO'"lld be incufficient to sustain a findir.g of jurisdiction.
For
the reasons detailed above, holdic,g and bene::itting economically
from a pat:ent or trademark through licensing activity cannot
alone form the basis fer jurisdiction.
pla~ntiff'
The Cm:.rt grants the
s tr,otior:. to the extent its proposed contents were
considered in ruling on the defendants' instant motion, but
denies it to the extent that the p!alntiff is denied leave to
file a formal brief in sur-reply,
An appropriate
ot~der
follcws.
-- 20
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