Medinfo Inc. v. MedTool LLC

Filing 29

ORDER ON MOTION TO DISMISS granting 20 Motion to Dismiss for Lack of Jurisdiction by Magistrate Judge Michael E. Hegarty on 6/5/2015. Medinfo has not met its burden of demonstrating this Courts personal jurisdiction over MedTool. Accordingly, Defendants Motion to Dismiss for Lack of Personal Jurisdiction [filed 5/18/2015; docket #20] is GRANTED. This case is dismissed without prejudice pursuant to Fed. R. Civ. P. 12(b)(2).(mdave, )

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO
Civil Action No. 15-cv-00260-MEH
MEDINFO, INC.,
Plaintiff,
v.
MEDTOOL LLC,
Defendant.
______________________________________________________________________________
ORDER ON MOTION TO DISMISS
______________________________________________________________________________
Before the Court is Defendant’s Motion to Dismiss for Lack of Personal Jurisdiction [filed
May 18, 2015; docket #20]. The matter is fully briefed, and the Court held oral argument on May
28, 2015. For the reasons that follow, the Court grants the motion.
BACKGROUND
I.

Procedural History
Plaintiff Medinfo, Inc. (“Medinfo”) initiated this action against Defendant MedTool LLC

(“MedTool”), a Michigan corporation, on February 6, 2015, alleging patent infringement of two
patents concerning foldable clipboards (that are used by medical professionals). Complaint, docket
#1.
MedTool filed the present Motion to Dismiss on May 18, 2015, arguing that MedTool has
not conducted general business activities in Colorado, has not engaged in actions directed toward
Colorado involving the alleged offending product, and thus is not susceptible to personal jurisdiction
in Colorado. Therefore, MedTool argues, the exercise of personal jurisdiction over it in this Court
would violate principles of Due Process.

Medinfo contends that it notified MedTool of the alleged infringement in September 2014
and, thus, MedTool has engaged in willful infringement since that time, knowingly doing direct
harm to a Colorado corporation. Medinfo believes that such “express aiming constitutes a
purposeful availment such that MedTool should reasonably anticipate being subject to personal
jurisdiction” in Colorado. Response at 1.1
II.

Relevant Facts
Although not alleged in the Complaint, the Court will accept, as true, Medinfo’s proffered

allegation (made in its Response and at the oral argument) that on September 27, 2014, it informed
MedTool that the latter’s products were infringing the former’s patents. Other facts proffered to this
Court and accepted as true for purposes of this Motion, based on the parties’ argument in Court and
their briefs, are that (1) the only sale ever made by MedTool into Colorado was an order placed prelitigation by Plaintiff’s counsel; (2) MedTool has no offices or employees in Colorado and does not
direct any activity toward Colorado other than maintaining a moderately interactive website that may
be accessed in Colorado; and (3) Medinfo is a Colorado resident, and MedTool is a Michigan
resident.

1

Medinfo also argued in its Response and at the oral argument that MedTool’s participation
in this litigation is a factor on whether personal jurisdiction is proper. That is not true, especially
when the defendant has -- as MedTool here -- raised the jurisdictional issue in a timely fashion.
E.g., IDS Life Ins. Co. v. SunAmerica Life Ins. Co., 136 F.3d 537, 540 (7th Cir. 1998). MedTool
raised its motion for lack of personal jurisdiction in compliance with Fed. R. Civ. P. 12(h)(B)(ii) in
their Amended Answer filed as a matter of course.
2

LEGAL STANDARDS
I.

Governing Law
As Defendant argues, “Federal Circuit law governs personal jurisdiction determinations in

patent cases.” Colida v. LG Electronics, Inc., 77 F. App’x 523, 525 (Fed. Cir. 2003) (citing Akro
Corp. v. Luker, 45 F.3d 1541, 1543 (Fed. Cir. 1995)).
II.

Fed. R. Civ. P. 12(b)(2)
When the Court has not conducted an evidentiary hearing, the plaintiff need only make a

prima facie showing that jurisdiction exists. AFTG-TG, LLC v. Nuvoton Tech. Corp., 689 F.3d
1358, 1360 (Fed. Cir. 2012). To defeat a plaintiff’s prima facie showing of jurisdiction, a defendant
must present a compelling case demonstrating that the presence of some other considerations would
render jurisdiction unreasonable. Nuance Comm’ns, Inc. v. Abbyy Software House, 626 F.3d 1222,
1231 (Fed. Cir. 2010) (quoting Burger King Corp. v. Rudzewicz, 471 U.S. 462, 477 (1985)).
In a patent case, as with other federal question cases, the federal court must determine (1)
“whether a forum state’s long-arm statute permits service of process, and [(2)] whether the assertion
of personal jurisdiction would violate due process.” Inamed Corp. v. Kuzmak, 249 F.3d 1356, 1359
(Fed. Cir. 2001). When, as here, a state’s long-arm statute confers the maximum jurisdiction
permitted by the Due Process Clauses of the United States and Colorado Constitutions, Archangel
Diamond Corp. v. Lukoil, 123 P.3d 1187, 1193 (Colo. 2005) (en banc), the court’s “jurisdictional
analysis collapses into a single determination of whether the exercise of personal jurisdiction
comports with due process.” Avocent Huntsville Corp. v. Aten Intern. Co., Ltd., 552 F.3d 1324,
1329 (Fed. Cir. 2008).

3

ANALYSIS
Personal jurisdiction may be established by demonstrating one of two types of jurisdictional
contacts with the forum state: General jurisdiction and specific jurisdiction.
General jurisdiction, on one hand, “requires that the defendant have ‘continuous and
systematic’ contacts with the forum state and confers personal jurisdiction even when
the cause of action has no relationship with those contacts.” Silent Drive, 326 F.3d
at 1200 (quoting Helicopteros Nacionales de Colombia, S.A. v. Hall, 466 U.S. 408,
416, 104 S.Ct. 1868, 80 L.Ed.2d 404 (1984)). Specific jurisdiction, on the other
hand, must be based on activities that arise out of or relate to the cause of action, and
can exist even if the defendant’s contacts are not continuous and systematic. Id.
(citing Burger King, 471 U.S. at 472–73, 105 S.Ct. 2174).
Autogenomics Inc. v. Oxford Gene Tech. Ltd., 566 F.3d 1012, 1017 (Fed. Cir. 2009). Because
Medinfo relies only on specific jurisdiction (and, in any event, there are no facts to support general
jurisdiction), I will address whether that standard has been met.
Again, quoting from the Autogenomics case, id. at 1018-19:
Where a defendant is not subject to general personal jurisdiction in the forum state,
a district court may nonetheless exercise specific personal jurisdiction over the
defendant subject to a three part test:
(1) the defendant purposefully directed its activities at residents of the forum, (2) the
claim arises out of or relates to those activities, and (3) assertion of personal
jurisdiction is reasonable and fair. With respect to the last prong, the burden of proof
is on the defendant, which must “present a compelling case that the presence of some
other considerations would render jurisdiction unreasonable” under the five-factor
test articulated by the Supreme Court in Burger King.
Breckenridge Pharm., Inc. v. Metabolite Labs., Inc., 444 F.3d 1356, 1363
(Fed.Cir.2006) (quoting Burger King, 471 U.S. at 477, 105 S.Ct. 2174). “The first
two factors correspond with the ‘minimum contacts' prong of the International Shoe
analysis, and the third factor corresponds with the ‘fair play and substantial justice’
prong of the analysis.” Inamed, 249 F.3d at 1360.
In addition, the Supreme Court recently re-articulated the criteria for establishing specific
jurisdiction. See Walden v. Fiore, -- U.S. --, 134 S. Ct. 1115 (2014). “The inquiry whether a forum

4

State may assert specific jurisdiction over a nonresident defendant ‘focuses on the relationship
among the defendant, the forum, and the litigation.’” Id. at 1121 (quoting Keeton, 465 U.S. at 775).
The “defendant’s suit-related conduct must create a substantial connection with the forum state,”
and “the relationship must arise out of contacts that the defendant himself creates with the forum
State”... with the “minimum contacts analysis look[ing] to the defendant’s contacts with the forum
State itself, not the defendant’s contacts with persons who reside there.” Id. at 1121-22 (citing
Burger King, 471 U.S. at 475 and Int’l Shoe Co. v. State of Wa., 326 U.S. 310, 319 (1945))
(emphasis in original). The “plaintiff cannot be the only link between the defendant and the forum.
Rather, it is the defendant’s conduct that must form the necessary connections with the forum State”
to support the basis for specific jurisdiction. Id. at 1122-23 (citing Burger King, 471 U.S. at 478).
I.

Purposely Directing Activities at Colorado
I have been presented with absolutely no facts that MedTool has purposely directed activities

at Colorado. Although Medinfo alleges that it informed MedTool in September 2014 that the latter’s
products infringe the patents of a Colorado corporation, and that the infringement did not stop
thereafter, there is no allegation or information that MedTool’s conduct changed after that date, at
least with regard to its directing activities at Colorado. Their conduct was the same before and after
knowledge of Medinfo’s allegations. I do not believe that mere “knowing” infringement (and, of
course, MedTool denies any infringement), equates with purposefully directing activities at the
patent holder’s place of business. “Personal jurisdiction does not speak to infringement or validity
at all.” Aqua Shield v. Inter Pool Cover Team, 774 F.3d 766, 774 (Fed. Cir. 2014). Moreover, as
MedTool argues, Supreme Court precedent strongly suggests that intentional infringement does not
create personal jurisdiction in the patent holder’s forum. World-Wide Volkswagen Corp. v.

5

Woodson, 444 U.S. 286, 296 (1980). The present case is very similar to Oticon, Inc. v. Sebotek
Hearing Systems, LLC, 865 F. Supp.2d 501, 518 (D.N.J. 2011), in which the court found that the
plaintiff had established the existence of an intentional tort of willful infringement. This, even in
light of the existence of some sales in the forum state, was not sufficient to establish personal
jurisdiction over the defendant. Rather, the fact that the defendant had not purposefully aimed its
conduct at the forum state was dispositive on the finding of a lack of personal jurisdiction. I believe
the same result must prevail here.2 As an aside, I agree with the case law from this District and other
jurisdictions establishing that one sale to the forum jurisdiction, when it is to the patent holder’s
counsel, along with the alleged patent infringer maintaining an interactive website, cannot suffice
for personal jurisdiction. Motion at 6-7.
CONCLUSION
Medinfo has not met its burden of demonstrating this Court’s personal jurisdiction over
MedTool. Accordingly, Defendant’s Motion to Dismiss for Lack of Personal Jurisdiction [filed May
18, 2015; docket #20] is GRANTED. This case is dismissed without prejudice pursuant to Fed. R.
Civ. P. 12(b)(2).
DATED this 5th day of June, 2015, at Denver, Colorado.
BY THE COURT:

Michael E. Hegarty, United States Magistrate Judge

2

There is Ninth Circuit precedent to the contrary. In Washington Shoe Co. v. A-Z Sporting
Goods, Inc., 704 F.3d 668 (9th Cir. 2012), the court determined that willful infringement was
sufficient to find that the defendant aimed its conduct at the patent holder’s forum. I believe neither
the Federal Circuit nor the Supreme Court would agree with this holding, and neither do I.
6