Ball Metal Beverage Container Corp. v. CML&J, LLC

Filing 23

ORDER re: Defendant's 13 Motion to Dismiss Pursuant to Fed.R.Civ.P 12(b)(2) and (b)(3). Defendant CML&J's Motion To Dismiss Pursuant to Fed. R. Civ. P.12(b)(2) and 12(b)(3) [#13], filed 4/18/2013, is GRANTED IN PART and DENIED ASMOOT IN PART. Plaintiff's claims against defendant are DISMISSED WITHOUTPREJUDICE. Judgment without prejudice SHALL ENTER. By Judge Robert E. Blackburn on 6/27/2013. (klyon, )

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO
Judge Robert E. Blackburn
Civil Action No. 1:13-cv-00695-REB-MJW
BALL METAL BEVERAGE CONTAINER CORP, a Colorado Corporation,
Plaintiff,
v.
CML&J, LLC, a Connecticut limited liability company,
Defendant.
_______________________________________________________________________
ORDER RE: DEFENDANT’S MOTION TO DISMISS
PURSUANT TO FED. R. CIV. P. 12(b)(2) AND 12(b)(3)
Blackburn, J.
The matter before me is Defendant CML&J’s Motion To Dismiss Pursuant to
Fed. R. Civ. P. 12(b)(2) and 12(b)(3) [#13],1 filed April 18, 2013. I grant the motion.
I. JURISDICTION
I putatively have jurisdiction over this matter pursuant to 28 U.S.C. § 1331 (federal
question) and 1338(a) (actions arising under federal patent law).
II. STANDARD OF REVIEW
Defendant moves to dismiss plaintiff’s claims against it on the ground that it does
not have sufficient minium contacts with Colorado to warrant the exercise of personal
jurisdiction over it in this forum. Alternatively, it claims that venue is improper in this
forum. “The question of personal jurisdiction, which goes to the court’s power to exercise

1

“[#13]” is an example of the convention I use to identify the docket number assigned to a specific
paper by the court’s electronic case filing and management system (CM/ECF). I use this convention
throughout this order.

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control over the parties, is typically decided in advance of venue, which is primarily a
matter of choosing a convenient forum,” although “when there is a sound prudential
justification for doing so, . . . a court may reverse the normal order of considering
personal jurisdiction and venue.” Leroy v. Great Western United Corp., 443 U.S. 173,
180, 99 S.Ct. 2710, 2715, 61 L.Ed.2d 464 (1979).
In patent law cases, the question whether this court has personal jurisdiction over
a defendant is governed by the law of the Federal Circuit. See Red Wing Shoe Co. v.
Hockerson-Halberstadt, Inc., 148 F.3d 1355, 1358 (Fed. Cir. 1998). The Federal
Circuit, in turn, looks to the relevant state’s long-arm statute to determine whether it
permits the assertion of personal jurisdiction over the defendant. 3D Systems, Inc. v.
Aarotech Laboratories, Inc., 160 F.3d 1373, 1376-77 (Fed. Cir. 1998). Because the
Colorado long-arm statute extends personal jurisdiction as far as the federal constitutional
requirements of due process permit, Keefe v. Kirschenbaum & Kirschenbaum, P.C.,
40 P.3d 1267, 1270 (Colo. 2002), the analysis collapses into a single inquiry as to
whether the requirements of due process are satisfied.
Due process for jurisdictional purposes consists of two elements. First, the
defendant must have sufficient “minimum contacts” with the forum state. International
Shoe Co. v. State of Washington, Office of Unemployment Compensation &
Placement, 326 U.S. 310, 316, 66 S.Ct. 154, 158, 90 L.Ed. 95 (1945); Kuenzle v. HTM
Sport-Und Freizeitgerate AG, 102 F.3d 453, 455 (10th Cir. 1996). “Minimum contacts”
may be analyzed in terms of either general or specific jurisdiction. Helicopteros
Nacionales de Colombia, S.A. v. Hall, 466 U.S. 408, 414, 104 S. Ct. 1868, 1872, 80
L.Ed.2d 404 (1984);Trierweiler v. Croxton & Trench Holding Corp., 90 F.3d 1523,
1532 (10th Cir. 1996). Specific jurisdiction exists if a “defendant has ‘purposefully

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directed’ his activities at residents of the forum . . . . and the litigation results from alleged
injuries that ‘arise out of or relate to’ those activities.” Burger King Corp. v. Rudzewicz,
471 U.S. 462, 472, 105 S.Ct. 2174, 2182, 85 L.Ed.2d 528 (1985) (citations omitted); see
also Kuenzle, 102 F.3d at 455. General jurisdiction is proper when the defendant has
other "continuous and systematic" contacts with the forum, even if those contacts are
unrelated to the pending litigation. Helicopteros Nacionales de Columbia, 104 S.Ct. at
1972; Trierweiler, 90 F.3d at 1533.
If sufficient minimum contacts exist, I then must determine whether the exercise of
personal jurisdiction over the non-resident defendant “would comport with ‘fair play and
substantial justice.’” Burger King Corp., 105 S.Ct. at 2184 (citation omitted); see also
International Shoe, 66 S.Ct. at 160. Stated differently, I must determine whether
assuming personal jurisdiction over the defendant is “reasonable in light of the
circumstances surrounding the case.” OMI Holdings, Inc. v. Royal Insurance Co. of
Canada, 149 F.3d 1086, 1091 (10th Cir. 1998). Factors relevant to that analysis include:
(1) the burden on the defendant, (2) the forum state’s interest
in resolving the dispute, (3) the plaintiff’s interest in receiving
convenient and effective relief, (4) the interstate judicial
system’s interest in obtaining the most efficient resolution of
controversies, and (5) the shared interest of the several states
in furthering fundamental social policies.
Trujillo v. Williams, 465 F.3d 1210, 1221 (10th Cir. 2006) (quoting Pro Axess, Inc. v.
Orlux Distribution, Inc., 428 F.3d 1270, 1279-80 (10th Cir. 2005)). “[T]he weaker the
plaintiff’s showing on minimum contacts, the less a defendant need show in terms of
unreasonableness to defeat jurisdiction.” Id. (quoting Pro Axess, 428 F.3d at 1280).
I have discretion to resolve the motion on affidavits and other written material.
Behagen v. Amateur Basketball Association, 744 F.2d 731, 733 (10th Cir. 1984), cert.
denied, 105 S.Ct. 1879 (1985). Plaintiff has the burden to establish a prima facie case of

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personal jurisdiction. Id.. I must accept the well-pleaded facts of the complaint as true.
Wenz, 55 F.3d at 1505; Behagen, 744 F.2d 744 F.2d at 733. However, plaintiff has “the
duty to support jurisdictional allegations in a complaint by competent proof of the
supporting facts if the jurisdictional allegations are challenged by an appropriate
pleading.” Pytlik v. Professional Resources, Ltd., 887 F.2d 1371, 1376 (10th Cir. 1989).
Regarding defendant’s alternative motion to dismiss for improper venue, the
federal venue statute provides that
[a] civil action may be brought in – (1) a judicial district in
which any defendant resides, if all defendants are residents of
the State in which the district is located; (2) a judicial district in
which a substantial part of the events or omissions giving rise
to the claim occurred, or a substantial part of property that is
the subject of the action is situated; or (3) if there is no district
in which an action may otherwise be brought as provided in
this section, any judicial district in which any defendant is
subject to the court's personal jurisdiction with respect to such
action.
28 U.S.C. § 1391(b). For purposes of this section, the court need not determine the “best”
venue, Bates v. C & S Adjusters, Inc., 980 F.2d 865, 867 (2nd Cir. 1992), but only
whether “significant events or omissions material to the plaintiff’s claim . . . occurred in the
district in question, even if other material events occurred elsewhere,” Gulf Insurance
Co. v. Glasbrenner, 417 F.3d 353, 357 (2nd Cir. 2005). Where venue in the filing district
is found to be improper, the court “shall dismiss, or if it be in the interest of justice,
transfer such a case” to a district in which venue properly lies. 28 U.S.C. § 1406(a). The
decision to either dismiss or transfer the case is committed to the sound discretion of the
court. Keaveney v. Larimer, 2000 WL 1853994 at *1 (10th Cir. Dec 19, 2000); see also
Trierweiler, 90 F.3d at 1544 (not a clear abuse of discretion for the district court to deny
a transfer when “a plaintiff either realized or should have realized that the forum in which
he or she filed was improper.”).

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III. ANALYSIS
This declaratory judgment action involves U.S. Patent No. 8,245,866 (the “‘866
Patent”), which describes a particular type of beverage container. The product embodied
in the ‘866 Patent was created by three friends – Daniel Gibson, Joseph Snecinski, and
Todd Epstein – who incorporated defendant for the purpose of licensing the beverage
container described in the ‘866 Patent. Gibson and Snecinski are residents of
Connecticut, and Epstein is a resident of Massachusetts. Defendant’s sole place of
business is Connecticut.
In April 2012, MillerCoors LLC introduced a Punch Top can in connection with its
Miller Lite and Miller Genuine Draft beers. Defendant claims these cans infringe its rights
in the ‘866 Patent. On October 15, 2012, it filed a patent infringement suit against
MillerCoors in the United States District Court for the District of Connecticut. (See
Complaint, Exh. 2 [#1], filed March 15, 2013.) That same day, defendant contacted
MillerCoors in Chicago, Illinois, informing it of the complaint and inviting it to discuss a
possible licensing agreement. (Id., Exh. 3.)
Plaintiff – a Colorado corporation with its principal place of business in this state –
responded to this letter, apprising defendant that it was the manufacturer of the Punch
Top can and would indemnify MillerCoors from suit. Plaintiff proceeded to set forth in
detail the bases for its assertions that its Punch Top cans did not infringe the ‘866 Patent
and that the patent was invalid. (See id., Exh. 4.) A lengthy response from defendant
followed, and over the next several months, the parties exchanged a series of letters
discussing the merits of defendant’s patent claims and possible ways to settle their
differences. (See id., Exhs. 5-9.) Ultimately, however, the parties could not reach a
resolution. This lawsuit followed.

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Plaintiff seeks a declaratory judgment that its Punch Top can does not infringe the
‘866 Patent and that certain claims of the patent are invalid. Additionally, plaintiff claims
that defendant tortiously interfered with its business relationship with MillerCoors. By the
instant motion, defendant asserts that the Colorado courts lack personal jurisdiction over
it. Alternatively, defendant maintains that venue is improper in this district. Because I
find the former issue determinative, I do not consider the latter.
As the party seeking to invoke the court’s jurisdiction, plaintiff bears the burden of
making a prima facie showing of personal jurisdiction over defendant in this forum.
Dudinikov v. Vermilion Fine Arts, Inc., 514 F.3d 1063, 1069-70 (10th Cir. 2008).
Plaintiff makes no pretense of attempting to argue that defendant is subject to general
jurisdiction in this state.2 Instead, plaintiff relies on its assertion that its communications
with defendant regarding the validity vel non of the patent claims in the Connecticut suit
are sufficient to create specific jurisdiction over defendant in Colorado.
A federal court may assume specific jurisdiction over a nonresident defendant that
"’purposefully avails itself of the privilege of conducting activities within the forum State,
thus invoking the benefits and protections of its laws.’" Benally v. Amon Carter
Museum of Western Art, 858 F.2d 618, 625 (10th Cir. 1988) (quoting Hanson v.
Denckla, 357 U.S. 235, 253, 78 S.Ct. 1228, 1239-40, 2 L.Ed.2d 1283 (1958)). The
purposeful availment requirement "ensures that a defendant will not be haled into a
jurisdiction solely as a result of random, fortuitous, or attenuated contacts, or of the
unilateral activity of another party or a third person.” Id. (quoting Burger King Corp., 105

2

Nor could it. Defendant has no physical or commercial presence in Colorado. It is not registered
to do business in this state, has no employees or representatives in Colorado, has never advertised here,
and participates in no contracts, licenses, or business relationships in the state. In no wise can defendant’s
contact with Colorado be described as sufficiently “continuous and systematic” to warrant the assumption of
general, personal jurisdiction over it in this forum. Helicopteros Nacionales de Colombia, 104 S.Ct. at
1873.

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S.Ct. at 2183) (internal citations and quotation marks omitted). The contacts with the
forum state must be such that "it is foreseeable that the defendant should reasonably
anticipate being haled into court there." World-Wide Volkswagen Corp. v. Woodson,
444 U.S. 286, 297, 100 S.Ct. 559, 567, 62 L.Ed.2d 490 (1980).
In this case, defendant’s contacts with the state of Colorado are based on nothing
more than the mere fortuity that plaintiff happens to be a resident of this state. Such has
never been sufficient to support the assumption of personal jurisdiction over a
nonresident defendant. See Far West Capital, Inc. v. Towne, 46 F.3d 1071, 1079 (10th
Cir. 1995). The parties’ communications involved a suit filed against MillerCoors, based
in Chicago, Illinois, in a Connecticut federal court. Defendant did not purposefully direct
any activity at Colorado; it was plaintiff that opened the exchange by informing defendant
that it would be indemnifying MillerCoors from suit.
Nor does defendant’s response informing plaintiff of its alleged rights in the patent
make defendant subject to personal jurisdiction this forum. See Red Wing Shoe Co.,
148 F.3d at 1360-61. A patentee must be free to inform a suspected infringer of its
claims without undue risk of subjecting itself to suit in the alleged infringer’s home forum.
See Hildebrand v. Steck Manufacturing Co., 279 F.3d 1351, 1356 (2002) (“[A]n offer to
license is so closely akin to an offer to settle that it may not be a separate contact upon
which to base jurisdiction.”). See also Kash 'n Gold, Ltd. v. ATSPI, Inc., 690 F.Supp.
1160, 1163 (E.D.N.Y. 1988) (noting that tort claims for intentional interference with
business relations in patent case “are not reliable bases for jurisdiction”).
Plaintiff’s reliance on OpenLCR.com v. Rates Tech., Inc., 112 F.Supp.2d 1223
(D. Colo. 2000), for its assertion that personal jurisdiction is warranted in this case is
woefully misplaced. The court there determined that the exercise of personal jurisdiction

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in Colorado over a New York-based defendant was proper based on its persistent, bad
faith threats of litigation made against a Colorado plaintiff. The defendant had
persistently hounded the plaintiff with numerous demand letters and repeated telephone
calls over a six-month period, refusing all attempts to discuss the validity of the patentsin-suit and “apparently preferring to focus [its] efforts at intimidating [the plaintiff] with
threats of litigation.” Id. at 1227-28. The court found that such harassment did not
constitute protected patent enforcement activity but was, instead, prima facie evidence of
bad faith. Id. at 1228.
Plaintiff seems to believe that by simply invoking the specter of bad faith, it may
conjure personal jurisdiction over defendant in this forum. OpenLCR.com itself does not
counsel such a result, and I do not find its high threshold for making a prima facie
showing of bad faith enforcement of defendant’s patent rights to be met here.
Defendant’s disagreements with plaintiff regarding the validity of the ‘866 Patent and
whether plaintiff’s products infringed it, and its concomitant acknowledgment that it would
seek all appropriate remedies available in the Connecticut lawsuit, are in no way
comparable to the threats and intimidation found sufficient to support personal jurisdiction
in OpenLCR.com. “A patentee, acting in good faith on its belief as to the nature and
scope of its rights, is fully permitted to press those rights even though he may
misconceive what those rights are.” Mikohn Gaming Corp. v. Acres Gaming, Inc., 165
F.3d 891, 897 (Fed. Cir. 1998) (citation and internal quotation marks omitted). Thus, the
parties’ mere difference of opinion as to the scope and validity of the ‘866 Patent is not
sufficient to support a prima facie showing bad faith or threatening behavior sufficient to
invoke the narrow exception recognized in OpenLCR.com.

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In sum, plaintiff has failed to establish that defendant has sufficient minimum
contacts with Colorado to support the assumption of personal jurisdiction over it in this
state.3 Thus, motion to dismiss for lack of personal jurisdiction will be granted.
IV. ORDERS
THEREFORE, IT IS ORDERED as follows:
1. That Defendant CML&J’s Motion To Dismiss Pursuant to Fed. R. Civ. P.
12(b)(2) and 12(b)(3) [#13], filed April 18, 2013, is GRANTED IN PART and DENIED AS
MOOT IN PART as follows:
a. That the motion to dismiss for lack of personal jurisdiction pursuant to
Fed. R. Civ. P. 12(b)(2) is GRANTED; and
b. That the motion to dismiss for improper venue pursuant to Fed. R. Civ.
P. 12(b)(3) is DENIED AS MOOT;
2. That plaintiff’s claims against defendant are DISMISSED WITHOUT
PREJUDICE; and
3. That judgment without prejudice SHALL ENTER in favor of defendant, CML&J,
LLC, a Connecticut limited liability company, against plaintiff, Ball Metal Beverage
Container Corp., a Colorado corporation, on all claims for relief and causes of action
asserted in this action.
Dated June 27, 2013 at Denver, Colorado.
BY THE COURT:

3

Since minimum contacts do not exist, I need not determine whether asserting personal
jurisdiction would comport with fair play and substantial justice. See Burger King Corp., 105 S.Ct. at 2184.

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