Opinion
With the parties' consent, this case has been referred and reassigned to the undersigned for all purposes, including trial and the entry of judgment, pursuant to 28 U.S.C. § 636(c).
November 20, 2001
MEMORANDUM AND ORDER ON DEFENDANT'S RULE 12(b)(2), (3) MOTION TO DISMISS FOR LACK OF PERSONAL JURISDICTION AND LACK OF VENUE (#8)
I. Introduction
In early September, 2000, plaintiff John L. McKernan ("McKernan" or "plaintiff") filed a one-count patent infringement case naming as the sole defendant Abloy Door Security d/b/a Abloy, as successor through merger to Assa Corporation and Abloy Security, Inc. ("Abloy Door Security" or "defendant"). It is alleged that Abloy Door Security manufactures and sells deadbolt locks that incorporate a certain type of sleeve which is the subject of a patent issued to McKernan. The plaintiff seeks triple damages, costs, interest and attorney's fees from the defendant as a result of the purported infringement.
In lieu of answering the complaint, Abloy Door Security filed a motion to dismiss for lack of jurisdiction and lack of venue (#8), together with a memorandum in support (#10) and an affidavit (#10). McKernan duly submitted a brief in opposition (#12) as well as an affidavit and attached exhibits (#13). The defendant then filed a reply (#17) and a second declaration (#16).
After a hearing held on May 9, 2001, McKernan was granted leave to conduct discovery on the issue of personal jurisdiction. Following an extension of time, in mid-September, 2001, the plaintiff filed two more affidavits and additional exhibits. (##31, 32) Abloy Door Security countered with a further reply. (#30) After reviewing the proffered exhibits, the Court held a telephone conference on September 27, 2001. Given the "clear factual disputes" between the parties, it was determined that the issue of personal jurisdiction would be decided on the basis of an evidentiary hearing which was set for October 24, 2001. (#35) The evidentiary hearing was held as scheduled and, at this juncture, the defendant's dispositive motion is in a posture for resolution.
II. The Facts
The recitation of the facts shall be limited to those few necessary to resolve the motion to dismiss. At the evidentiary hearing, the plaintiff proffered numerous invoices denoting sales of deadbolt locks in the Commonwealth of Massachusetts. Certain of those invoices are from a company named Abloy Construction Locking of Brooklyn, New York. The undisputed testimony was that Abloy Construction Locking is a company separate and distinct from the defendant in this case, Abloy Door Security. As a consequence, the Abloy Construction Locking invoices are irrelevant to the case at hand and shall be disregarded.
Next there are certain invoices designated by the name Abloy only. The testimony at the evidentiary hearing was that the origin of these invoices is unknown. In these circumstances, it cannot be said that this group of invoices reflects any sales whatsoever by the defendant in this case, Abloy Door Security. Consequently, once again, these invoices prove nothing pertinent to the present inquiry.
Finally the plaintiff proffered invoices from Abloy Canada, Inc. None of the items listed in those invoices are deadbolt locks which incorporate the patented sleeve. In other words, those invoices do not evidence the sale of any infringing deadbolts by Abloy Canada, Inc. in Massachusetts.
It is undisputed that Abloy Door Security is a division of Abloy Canada, Inc. (See, e.g., Declaration of Stephen Timmons #9 ¶ 1; Second Declaration of Stephen Timmons #16 ¶ 1)
III. Discussion
Based on the evidence produced at the hearing, the issue to be decided is crystallized: Does this Court have personal jurisdiction over Abloy Door Security when there is a dearth of evidence to prove that the defendant has sold any infringing deadbolt locks in Massachusetts? McKernan, of course, bears the burden of establishing both that this Court has jurisdiction over Abloy Door Security and that venue is proper. See Massachusetts School of Law at Andover, Inc. v. American Bar Ass'n, 142 F.3d 26, 34 (1 Cir., 1998) ("On a motion to dismiss for want of in personam jurisdiction, Fed.R.Civ.P. 12(b)(2), the plaintiff ultimately bears the burden of persuading the court that jurisdiction exists."); Gray v. O'Brien, 777 F.2d 864, 866 (1 Cir., 1985). As the Federal Circuit has recently noted "[d]etermining whether the district court has jurisdiction over an out-of-state defendant involves two inquiries: whether the forum state's long-arm statute permits service of process and whether the assertion of personal jurisdiction would violate due process." Pieczenik v. Dyax Corporation, 265 F.3d 1329, 1333 (Fed. Cir., 2001) (citations omitted). More than fifteen years ago the First Circuit observed:
It is now well established that the Massachusetts long-arm statute imposes "a set of constraints on the assertion of in personam jurisdiction in addition to the restraints imposed by the Constitution." Hahn, 698 F.2d at 50; Nova Biomedical Corp. v. Moller, 629 F.2d 190, 192-93 (1st Cir. 1980); Carlson Corp. v. University of Vermont, 380 Mass. 102, 402 N.E.2d 483, 485 (1980); Good Hope Industries, Inc. v. Ryder Scott Co., 378 Mass. 1, 389 N.E.2d 76, 79-80 (1980). Thus, while the statute has been construed by the Massachusetts Supreme Judicial Court as asserting "jurisdiction over the person to the limits allowed by the Constitution of the United States," "Automatic" Sprinkler Corp. of America v. Seneca Foods Corp., 361 Mass. 441, 280 N.E.2d 423, 424 (1972), the constitutional due process analysis is only reached "when some basis for jurisdiction enumerated in the statute has been established." Morrill v. Tony, 390 Mass. 120, 453 N.E.2d 1221, 1227 (1983) (quoting Good Hope, 389 N.E.2d at 80).
Gray, 777 F.2d at 866 (footnote 4 omitted). Hence, the place to begin is with an examination of the Massachusetts long arm statute.
In relevant part, Massachusetts General Laws chapter 223A § 3 provides that:
A court may exercise personal jurisdiction over a person, who acts directly or by an agent, as to a cause of action in law or equity arising from the person's
(a) transacting any business in this commonwealth;
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(c) causing tortious injury by an act or omission in this commonwealth;
(d) causing tortious injury in this commonwealth by an act or omission outside this commonwealth if he regularly does or solicits business, or engages in any other persistent course of conduct, or derives substantial revenue from goods used or consumed or services rendered, in this commonwealth.
Mass. Gen. L. c. 223A § 3. The applicability of subsections (c) and (d) can be addressed with dispatch given the facts of this case. The Federal Circuit has discussed the question of where the "tort" of patent infringement occurs:
In concluding that the situs of the putative "tort" of patent infringement is the domicile of the patentee, the district court relied on its reading of Honeywell, Inc. v. Metz Apparatewerke, 509 F.2d 1137, 1142, 184 USPQ 387, 390-91 (7th Cir. 1975). Unfortunately, the district court did not have the benefit of this court's subsequent opinion in Beverly Hills Fan Co. v. Royal Sovereign Corp., 21 F.3d 1558, 1570-71, 30 USPQ2d 1001, 1011-12 (Fed. Cir. 1994), which disagreed that Honeywell stood for that proposition and instead held as a matter of uniform federal patent law that patent infringement occurs where allegedly infringing sales are made. Id. at 1570-71, 30 USPQ2d at 1011-12. In addition, while it may be appropriate to speak loosely of patent infringement as a tort, more accurately the cause of action for patent infringement is created and defined by statute. See 35 U.S.C. § 271(a) (1988). The statute does not speak generally of the "tort of patent infringement," but specifically of a liability that arises upon the making, using, or selling of an infringing article. Thus, the statute on its face clearly suggests the conception that the "tort" of patent infringement occurs where the offending act is committed and not where the injury is felt. Id.
North American Philips Corp. v. American Vending Sales, Inc., 35 F.3d 1576, 1578-79 (Fed. Cir., 1994).
Since no infringing sales of deadbolt locks were made by Abloy Door Security in Massachusetts, the defendant cannot be said to have caused tortious injury in the Commonwealth under either § 3(c) or § 3(d) of chapter 223A. With the elimination of these two jurisdictional predicates, whether the Court has in personam jurisdiction over the defendant turns on if the alleged patent infringement in this case arises from Abloy Door Security's transaction of business in Massachusetts.
Title 35 U.S.C. § 271(a) reads:
Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.
Whatever business Abloy Door Security may transact in Massachusetts, the plaintiff's cause of action, patent infringement, cannot arise from that transaction because the business did not include the sale of (or offer to sell) any deadbolt locks incorporating the allegedly infringing sleeves as mandated by the statute. Put another way, in the absence of any such infringing sales in the forum, it cannot be said that McKernan's patent infringement claim arises from the defendant's transaction of business here.
If a defendant sells an infringing device in Massachusetts, that would be an act of infringement which would "arise out of" the defendant's transaction of business in Massachusetts. See Systemation, Inc. v. Engel Industries, Inc., 992 F. Supp. 58 (D.Mass., 1997), wherein I wrote:
. . . [T]he cause of action alleged, i.e., patent infringement, "arises from" this transaction of business [in Massachusetts]. The sale of the machine to the Massachusetts distributor constitutes an alleged act of infringement. It does not matter that the machine was ordered by the distributor on behalf of a Massachusetts corporation to use in its manufacturing plant in New Hampshire. The sale to the Massachusetts distributor is sufficient to establish the prerequisites of the cause of action if it is found that Engel's machine infringes Systemation's patent.
Systemation, 992 F. Supp. at 60.
The Supreme Judicial Court has had occasion to analyze the "arising from" element in the Massachusetts long-arm statute at some length. Tatro v. Manor Care, Inc., 416 Mass. 763, 769-71, 625 N.E.2d 549, 552-4 (1994). In doing so, the SJC rejected a narrow interpretation of chapter 223A espoused by the First Circuit in Marino v. Hyatt Corp., 793 F.2d 427 (1 Cir., 1986), in favor of a broader view. In Marino, the plaintiff was injured when she slipped and fell in her hotel room in Hawaii. Id. at 427. It was argued that the Court could properly exercise personal jurisdiction over the defendant hotel because the plaintiff's injury arose from her having made her Hawaiian hotel reservation through a travel agent in Massachusetts. Id. at 429. The First Circuit was unpersuaded by this argument, concluding instead that the "arising from" element in the long-arm statute essentially is determined by applying a proximate cause test. Id. at 429-30; see also Pizarro v. Hoteles Concorde Int'l, C.A., 907 F.2d 1256, 1259 (1 Cir., 1990) ("Whether certain events 'arise out of' a nonresident defendant's actions . . . is comparable or analogous to whether certain actions can be said to be the legal, or proximate cause of injuries suffered by a plaintiff.")
The facts of the Tatro case were similar to those in Marino: the plaintiff had slipped and fallen in her hotel room in California. Suit was brought in Massachusetts where the plaintiff resided based upon the allegation
that her injury "arises from" the defendant's transaction of business in Massachusetts because "but for [the hotel's] solicitation of her business and subsequent contract for the hotel room in which she was injured, [her] injuries would not have occurred."
Tatro, 416 Mass. at 769.
The Massachusetts Supreme Judicial Court agreed with the plaintiff's contention, endorsing the approach of a line of cases that had adopted a "but for" test which was viewed as "more consistent with the language of our statute and with decisions of this court interpreting it." Tatro, 416 Mass. at 770. The SJC decided that Tatro's claim did arise from the defendant's transaction of business in the Commonwealth in that "[b]ut for the defendant's solicitation of business in Massachusetts, and its agreement to provide the plaintiff with hotel accommodations in Anaheim, California, the plaintiff would not have been injured in a room in the hotel." Id. at 771-2; see also Lyle Richards Intern., Ltd. v. Ashworth, Inc., 132 F.3d 111, 114 (1 Cir., 1997) ("The 'arising from' clause in chapter 223A is to be generously construed in favor of asserting personal jurisdiction, by applying the following 'but for' causation test: Did the defendant's contacts with the Commonwealth constitute 'the first step in a train of events that result[ed] in the personal injury.' Tatro, 625 N.E.2d at 553.")
In the present case there quite simply is no "but for" connection. It cannot be said that but for whatever business Abloy Door Security has conducted in this forum, patent infringement would not have occurred. Since no evidence has been adduced that the defendant ever sold or offered to sell the devices which allegedly infringe plaintiff's patent in Massachusetts, there is simply no nexus between the business it does in Massachusetts and the cause of action. See Pieczenik, 265 F.3d 1329 (construing nexus requirement under the New York long-arm statute in a patent infringement context). Consequently, the plaintiff has failed to establish that his cause of action arises out of the defendant's transaction of business in Massachusetts such that the Court may properly assert personal jurisdiction over the defendant.
The Rule 12(b)(3) portion of the motion to dismiss, which states an alternative and independent ground for dismissal, calls for minimal discussion. The patent venue statute, 28 U.S.C. § 1400, provides "(b) [a]ny civil action for patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business." McKernan alleges in his complaint that Abloy Door Security "is a separately incorporated Canadian subsidiary or division of its parent company . . . [with] an office and a principal place of business in the City of Montreal, Province of Quebec." (#1 2) Since Abloy Door Security does not reside in Massachusetts and the plaintiff has not proven that the defendant has "committed acts of infringement" here, venue does not lie in the District of Massachusetts.
IV. Conclusion and Order
For the reasons stated, it is ORDERED that the Defendant's Rule 12(b)(2), (3) Motion To Dismiss For Lack Of Personal Jurisdiction be, and the same hereby is, ALLOWED. Judgment shall enter dismissing the Complaint on the grounds of lack of personal jurisdiction over the defendant and lack of venue in the District of Massachusetts.