United States District Court, D. Minnesota
Michael A. Essien, Esq., Essien Law Offices, PLLC, counsel for Plaintiff.
Mark R. Privratsky, Esq., Lindquist & Vennum PLLP; and William M. Dolan, III, Esq., Donoghue Barrett & Singal P.C., counsel for Defendant.
MEMORANDUM OPINION AND ORDER
DONOVAN W. FRANK, District Judge.
This matter is before the Court on Defendant Ira Green, LLC's ("Ira Green") Motion to Dismiss, or in the Alternative, to Transfer Venue. (Doc. No. 11.) For the reasons set forth below, the Court grants Defendant's motion to dismiss and denies Defendant's motion to transfer venue as moot.
Plaintiff Hoo-Ahhs, LLC ("Hoo-Ahhs") is a Minnesota company with its principal place of business in St. Paul, Minnesota. (Doc. No. 1 ("Compl.") ¶ 3.) Defendant Ira Green is a Rhode Island company with its principal place of business in Providence, Rhode Island. (Doc. No. 16 ("McAllister Decl.") ¶¶ 2-3.) Both Hoo-Ahhs and Ira Green develop, manufacture, and sell pre-moistened field wipes for use by United States military personnel. ( Id. ¶¶ 9-10; Compl. ¶¶ 12-13.) Hoo-Ahhs also owns two patents that relate to the packaging for its pre-moistened field wipes: (1) U.S. Patent No. D487, 224 ("'224 Patent"), titled "Packaging for Pre-Moistened Convenient Field Towels"; and (2) U.S. Patent No. D554, 925 ("'925 Patent"), titled "Field Towel Container." (Compl. ¶¶ 12-13.)
On April 17, 2014, Hoo-Ahhs sued Ira Green for patent infringement. (Compl.) In its complaint, Hoo-Ahhs asserts the following two claims against Ira Green: (1) infringement of the '224 Patent; and (2) infringement of the '925 Patent. ( Id. ¶¶ 25-38.) Ira Green now moves to dismiss both claims for lack of personal jurisdiction, or in the alternative, to transfer venue. (Doc. No. 11.)
I. Motion to Dismiss for Lack of Personal Jurisdiction
Defendant seeks dismissal of Plaintiff's claims for lack of personal jurisdiction. In determining whether personal jurisdiction exists in a patent infringement case, courts apply Federal Circuit law. See 3D Sys. v. Aarotech Labs., Inc., 160 F.3d 1373, 1377 (Fed. Cir. 1998). Under Federal Circuit law, "[p]ersonal jurisdiction over an out-of-state defendant is appropriate if the relevant state's long-arm statute permits the assertion of jurisdiction without violating federal due process." Id. at 1376-77. Minnesota's long-arm statute, Minn. Stat. § 543.19, extends jurisdiction to the maximum limit consistent with federal due process; therefore a court in Minnesota need only evaluate whether the requirements of due process are satisfied. Wessels, Arnold & Henderson v. Nat'l Med. Waste, Inc., 65 F.3d 1427, 1431 (8th Cir. 1995).
Federal due process requires that defendants have "certain minimum contacts" with the forum state such that "maintenance of the suit does not offend traditional notions of fair play and substantial justice." Int'l Shoe Co. v. Washington, 326 U.S. 310, 316 (1945) (internal quotations omitted). A defendant's conduct and connection with the forum state must be such that the defendant should reasonably anticipate being haled into court there. World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286, 297 (1980). It is essential in each case that the defendant has purposefully availed itself of the privilege of conducting activities within the forum state, thus invoking the benefits and protections of its laws. Burger King Corp. v. Rudzewicz, 471 U.S. 462, 475 (1985) (quoting Hanson v. Denckla, 357 U.S. 235, 253 (1958)).
Under the minimum contacts analysis, personal jurisdiction over a non-resident defendant may be either general or specific. LSI Indus., Inc. v. Hubbell Lighting, Inc., 232 F.3d 1369, 1375 (Fed. Cir. 2000). General jurisdiction arises when a defendant maintains such "continuous and systematic" contacts with a state that it becomes subject to the jurisdiction of that state's courts for any purpose. Id. (quoting Helicopteros Nacionales de Colombia, S.A. v. Hall, 466 U.S. 408, 414-16 (1984)). Specific jurisdiction arises when a defendant purposely directs its activities at residents of the forum state and the litigation arises out of or relates to those activities. Akro Corp. v. Luker, 45 F.3d 1541, 1545-46 (Fed. Cir. 1995).
Hoo-Ahhs argues that Ira Green's contacts with Minnesota are sufficient to subject it to both general and specific personal jurisdiction in Minnesota. First, Hoo-Ahhs contends that Ira Green maintains such continuous and systematic contacts with Minnesota to justify general personal jurisdiction. In support of this argument, Hoo-Ahhs alleges that Ira Green offers its products for sale in Minnesota year-round and markets or otherwise promotes its products to Minnesota residents through its website. Second, Hoo-Ahhs argues that Ira Green is subject to specific personal jurisdiction in Minnesota because it purposely directs its activities toward Minnesota residents. According to Hoo-Ahhs, specific personal jurisdiction is proper because Ira Green placed its products into the stream of commerce through its website and the Army Air Force Exchange Service ("AAFES") with the expectation that such products would be purchased by Minnesota residents; Ira Green committed acts of patent infringement in Minnesota; Ira Green was aware that ...