United States District Court, D. Minnesota
Alexander Farrell, Esq., and Jonathan D. Jay, Esq., Hellmuth
& Johnson PLLC, counsel for Plaintiff.
M. Grove, Esq., Howard & Howard Attorneys PLLC; and
Steven L. Reitenour, Esq., Bowman & Brooke, counsel for
MEMORANDUM OPINION AND ORDER
Donovan W. Frank United States District Judge
matter is before the Court on Defendant Bandit Industries,
Inc.'s Motion to Dismiss. (Doc. No. 9.) For the reasons
set forth below, the Court grants Defendant's motion.
Rotochopper, Inc., is a Minnesota company with its principal
place of business in St. Martin, Minnesota. (Doc. No. 1
(“Compl.”) ¶ 1.) Defendant is a Michigan
Corporation with its principal place of business in Remus,
Michigan. (Id. ¶ 2; Doc. No. 11 (“Mocny
Decl.”) ¶ 4.) Plaintiff is the owner by assignment
of the entire right, title, and interest in U.S. Patent No.
6, 207, 228 (the '228 Patent), entitled Concurrent
Fragmentation and Impregnation Machine and Processing.
(Compl. ¶¶ 9, 10, Ex. A (the '228 Patent).) In
this action, Plaintiff alleges that Defendant manufactures,
assembles, and sells horizontal wood grinder products, stump
grinders, hand-fed chippers, and whole-tree chippers,
including a horizontal grinder called “The
Beast.” (Compl. ¶¶ 11-12.) Plaintiff further
alleges, upon information and belief, that Defendant has
marketed and sold “The Beast” along with a
separate coloring system that, when used together, infringe
the '228 Patent (together, the “allegedly
infringing product”). (Id. ¶¶ 6,
14.) “The Beast” can be sold with or without a
coloring system. Plaintiff alleges that Defendant sells
“The Beast” throughout the United States,
including through a dealer in Minnesota. (Doc. No. 14
(“Brick Decl.”) ¶ 8.)
to Defendant, “The Beast” is made and sold by a
separate Michigan entity, Smoracy, LLC, and that Defendant
helps Smoracy, LLC, market certain large specialty products,
including the allegedly infringing product. (Mocny Decl.
¶¶ 9-10.) Defendant also submits that the allegedly
infringing product is not mass produced and costs
approximately $500, 000. (Id. ¶ 11.) In
addition, Defendant submits that only two have ever been
produced and none has ever been manufactured or sold in
Minnesota. (Id. ¶¶ 11, 12.) Defendant has
sold 119 other products in Minnesota, totaling approximately
$7, 000, 000 in sales; however, Defendant submits that these
products are unrelated to the allegedly infringing product
and account for less than 1% of Defendant's total annual
sales. (Id. ¶ 13.) Defendant also points out
that it does not have any offices in Minnesota, does not own
or lease property in Minnesota, has no bank accounts in
Minnesota, and has no employees in Minnesota. (Id.
¶¶ 15-18.) Defendant acknowledges that it has an
independent dealer in Minnesota, but submits that the dealer
is not an employee and does not (and is not authorized to)
sell the allegedly infringing product. (Id. ¶
October 5, 2016, Plaintiff sued Defendant for patent
infringement, asserting a single claim for the direct
infringement of the '228 Patent. (Id.
¶¶ 32-37.) Defendant now moves to dismiss the claim
for lack of personal jurisdiction. (Doc. No. 9.)
Motion to Dismiss
seeks dismissal of Plaintiff's claims for lack of
personal jurisdiction. To survive a motion to dismiss for
lack of personal jurisdiction, a plaintiff must make a prima
facie showing that personal jurisdiction exists; that is, a
plaintiff must allege facts to support a reasonable inference
that defendant may be subjected to jurisdiction in the chosen
forum. Steinbuch v. Cutler, 518 F.3d 580, 585 (8th
Cir. 2008) (citing Dever v. Hentzen Coatings, Inc.,
380 F.3d 1070, 1072 (8th Cir. 2004)). If, as is the case
here, the defendant denies jurisdiction, the plaintiff bears
the burden of proving facts supporting personal jurisdiction.
See Wells Dairy, Inc. v. Food Movers Int'l,
Inc., 607 F.3d 515, 518 (8th Cir. 2010) (quotation
omitted). Once a defendant offers affidavits to challenge
personal jurisdiction, “facts, not mere allegations,
must be the touchstone” in determining whether personal
jurisdiction exists. Dever, 380 F.3d at 1072
(citation omitted); see also Abbasi v. Leading
Edge Aviation Servs., Inc., Civ. No. 16-295, 2016 WL
4007571, at *3 (D. Minn. July 26, 2016).
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 extends jurisdiction to the
maximum limit consistent with federal due process; therefore
the Court 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.
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 ...