FrenchPorte, LLC et al v. Martin Door Manufacturing, Inc. et al

Filing 29

MEMORANDUM OPINION. Signed by Judge Theodore D. Chuang on 8/14/2014. (kns, Deputy Clerk)

UNITED STATES lllSTRICT COURT
DISTRICT m'MARYLAND

FRENCHPORTE

IP, LLC,.I al.,

Plaintiffs,

v.
Civil Action No. TDC-14-0295
MARTIN DOOR MANUFACTURING,

INC.,

et al.,
Defendants.

MEMORANDUM

OPINION

Before the Court are Defendant Martin Door Manufacturing,lnc.'s

Motion to Dismiss for

Lack of Personal Jurisdiction and Improper Venue, or, in the Alternative for Transfer to the
District of Utah, ECF NO.7;

Defendant DirectBuy, Inc.'s Motion to Dismiss for Lack of

Personal Jurisdiction, ECF No. 12; and Plaintiffs FrenchPorte IP, LLC and FrenchPorte, LLC's
Motion for Jurisdictional Discovery, EeF No. 26. For the reasons set forth below, the Court
DENIES Martin Door's motion, DEFERS DirectBuy's motion pending jurisdictional discovery,
and DISMISSES AS MOOT FrenchPorte's motion.
BACKGROUND

AND PROCEDURAL

HISTORY

lbis is a patent infringement action filed by FrenchPorte IP, LLC and FrenchPorte, LLC
against Martin Door Manufacturing, Inc. ("Martin Door"), DirectBuy, Inc. ("DirectBuy"),
Awning

Concepts

Unlimited,

LLC ("Awning

Concepts").

FreochPorte

and

Jp, LLC and

FrenchPorte, LLC (collectively, "FrenchPorte") are Maryland limited liability companies with
their principal places of business in Chevy Chase, Maryland. FrenchPorte is the assignee of nine
U.S. patents.

Eight of those patents-one

utility and seven design patents-are

for "overhead

garage doors that look just like French doors." Compl.

10. ECF NO.1. The remaining patent is

for a "pinch resistant apparatus" that prevents a person's fingers from being pinched between the
joints of the garage door. CompI. Ex. N at col. I, line 52.

Martin Door is a California

corporation with its principal place of business in Salt Lake City, Utah. DirectBuy is an Indiana
corporation with its principal place of business in Merrilville, Indiana. AMling Concepts is a
Maryland limited liability company with its principal place of business in Stevensville,
Maryland; it is the registered OMler of the trade name "Shore Doors & AMlings." AMling
Concepts has thus far made no appearance in the case.
In 2003, FrenchPorte began to manufacture and sell its patented garage doors. In 2006, it
developed and began to include on its doors the patented pinch-resistant apparatus. By 2006,
FrenchPorte had achieved a fair amount of success on the East Coast and was looking to expand
its presence in the Midwest and Western markets. With that aim, in May 2006, representatives
from FrenchPorte met with representatives from Martin Door-a "well-established garage door
manufacturer and distributor with deep roots in the Midwest and West"-to

discuss a

partnership. Compl. ~ 24. As part of those discussions, FrcnchPorte "displayed [its} pinch
resistance extrusion design and [a] door sample" to executives from Martin Door. Jd

26.

Although initially promising, the discussions ultimately went nowhere, and by 2007, "Martin
[Door] was no longer even returning phone calls from FrenchPorte's CEO." Jd. 33.
In FrenchPorte's estimation, the cause of this communication breakdoMl was clear. In
2007, Martin Door began to include "FingerShield" joints on all of its residential aluminum
garage doors. FrenchPorte alleges that Martin Door's FingerShield joint is essentially the same
as FrenchPorte's patented "pinch resistance extrusion design," which FrenchPorte showed to
Martin Door in 2006. And in 2009, Martin Door began to manufacture and sell the "Avignon"

2

garage door (later rebranded the "'Athena" garage door), a door that FrenchPorte alleges is
essentially identical to its patented garage door, which was displayed to Martin Door in 2006.
See CompI. Exs. 0 and R.

Martin Door continues to include the FingerShield joint on its

residential aluminum garage doors; it sold the AvignonlAthena garage door until at least October
16,2013.

FrenchPorte alleges that Martin Door sold the AvignonlAthena doors and sold and

continues to sell doors with the FingerShield joint specifically in Maryland through a distribution
channel consisting of its authorized dealer, Awning Concepts, and a retailer, DirectBuy.
On January 30, 2014, FrenchPorte filed a patent infringement suit in this Court against
Martin Door, DirectBuy, and A""ning Concepts.

ECF No. 1. In the Complaint, FrenchPorte

argues that this Court has personal jurisdiction over Martin Door and DirectHuy because both
have "'sold and, unless restrained by this Court, will continue to sell" to Maryland residents
garage doors that infringe FrenchPorte's patents. Compl.

'1" 6(d)

and 7(d). FrenchPorte explains

that it does not know the exact volume of these sales, but that "[a]t a bare minimum," Defendants
have "collectively
residents. ld.'

sold between

10 and 20 infringing Martin garage doors" to Maryland

6(e) and 7(e).

More specifically, FrenchPorte asserts that Martin Door is subject to personal jurisdiction
in Maryland because it "'creat(edJ and maintainls) a distribution channel in this State" for its
allegedly infringing doors, "consisting of its authorized dealer, Awning Concepts using the trade
name Shore Doors, and a retailer, DirectBuy,"

Compl. ~ 6(b). As evidence of this distribution

channel, FrenchPorte has appended to its complaint a screenshot of Martin Door's website listing
Shore Doors in Stevensville, Maryland, as a Martin Door "Authorized Dealer."
FrenchPorte

additionally

asserts

that Martin

3

Door's

website-through

Compl. Ex. A.

which

it

IS,

III

FrenchPorte's estimation, "doing and soliciting business" in Maryland-is

another basis for

personal jurisdiction. Compl.' 6(c).
FrenchPorte alleges that DirectBuy is subject to personal jurisdiction in Maryland
because it "creat[ed] and maintain[s] three showrooms" in Maryland-DirectBuy of Columbia,
DirectBuy of Washington North, and DirectBuy of Southern Maryland-"at least in part with the
intent and for the purpose" of selling Martin Door's allegedly infringing garage doors to
Maryland residents. Compl.' 7(b). FrenchPorte notes, however, that DirectBuy is a "members
only club," and therefore "very limited information regarding the Martin Doors that DirectBuy
sells is available to the public." Comp!. ~ 50.

On March 3, 2014, Martin Door filed an Answer and a Motion to Dismiss for Lack of
Personal Jurisdiction and Improper Venue, or, in the Alternative to Tnmsfer Venue. ECF Nos. 6
and 8. In that motion, Martin Door does not deny that its products are sold in Maryland, or that
DirectBuy and Awning Concepts are retailers of Martin Door products. Instead, it argues that
any connections it has with Maryland are insufficient to give rise to personal jurisdiction. I In
this regard, Martin Door notes that it has no offices, phone listings, mailing addresses, agents,
representatives, employees, property, or bank accounts in Maryland, and that it does not store
any inventory in Maryland. Mot. Dismiss at 3.4. It argues that it "intentionally limits the
geographic extent to which [it] delivers garage doors to exclude Maryland": Martin Door garage
doors bound for Maryland are placed "with a common carrier who transports the garage door to
the customer pursuant to the customer's instructions." Id

It further argues that any sales in

1 Martin Door premises its improper venue claim on its contention that it does not reside in
Maryland and "no substantial part of the events" occurred in this district. Mot. Dismiss at II.
Because venue would be proper if Martin Door is subject to personal jurisdiction in Maryland,
see 28 U.S.C. S l391(b)(3), Martin Door's improper venue claim is effectively subsumed by the
personal jurisdiction question.

4

Maryland amount to "less than one-tenth of one percent" of its yearly revenues.

Id. at 4.

regard to its internet presence, Martin Door argues that its website is "informational

In

only"

because no tv1artin Door products can be purchased through the sile. Id.
On March 6, 2014, Directl3uy filed an Answer and a Motion to Dismiss for Lack of
Personal Jurisdiction.
three

ShO\\TOOmS

ECF Nos. 11 and 12. In that motion, DirectBuy docs not deny that the

FrenchPorte identified-DirectBuy

of Columbia. DirectBuy of Washington

North, and DirectBuy of Southern Maryland-sell

Martin Door products.

asserts

are "independently

that those three

franchisels)'''
transactions"
Maryland."

Maryland

and therefore

showrooms

that DirectBuy

"does not control

Rather, DirectBuy

ovmed and operated

or direct the[ir] business

and "derives no revenue from the sale or use of Martin Door garage doors in
Mot. Dismiss at 2. DirectBuy thus concludes that it "has no obligation or liability

related to the sale of any Martin Door garage doors" by those franchises.

Id. Accordingly,

DireclRuy asserts that it lacks sufficient contacts to be subject to personal jurisdiction
Maryland.
addresses.

in

In this regard, DirectBu)' notes that it has no offices. phone listings. mailing
or bank accounts in Maryland. and that it has no representatives

Maryland to sell Martin Door garage doors:'

"working

in

Id. at 2-3.

On March 27. 2014, FrenchPorte filed a Response in Opposition to Martin Door's and
DirectBuy's Motions to Dismiss tor Lack of Personal Jurisdiction.

ECF No. 16. On April 21,

2014, Martin Door and DirectSuy each tiled a Reply to FrenchPorte's Response.

ECF Nos. 20

and 21. On June 20. 2014. FrenchPorte filed a Motion for Expedited Jurisdictional Discovery
seeking discovery from Martin Door, a motion that Martin Door opposed on July 10.2014.

ECF

Nos. 26 and 27. On July 28, 2014, FrenchPorte tiled a Reply to Martin Door's Response. ECF
No. 28.

5

DISCUSSION
I.

The Timeliness of the Motions to Dismiss
On March 3, 2014, Martin Door filed its Answer at 10:30 a,m. followed by its Motion to

Dismiss for Lack of Personal Jurisdiction at 10:44 a.m. See ECF Nos. 6 and 8. On March 6,

2014, DirectBuy filed its Answer at 5:33 p.m. followed by its Motion to Dismiss for Lack of
Personal Jurisdiction at 5:42 p.m. See EeF Nos. 11 and 12. As FrenchPorte points out, see
Opp'n Mot. Dismiss at 5, Martin Door and DirectBuy have thus failed to follow the clear
requirements of Federal Rule of Civil Procedure 12(b), which directs defendants to file a motion
asserting a defense under Rule 12 "before pleading if a responsive
(emphasis added).

Under a strict reading of Rule 12, then, Martin Door's and DirectBuy's

motions are untimely and, as a consequence,
defenses.

pleading is allowed"

they have waived their personal jurisdiction

See Fed. R. Civ. P. 12(b) ("A motion asserting any [12(b)] defenses must be made

before pleading"); Fed. R. Civ. P. 12(h)(I)(B)(i) (stating that a party waives a 12(b)(2) defense if
it fails to make it by motion in accordance with the rule or include it in a responsive pleading);
Steven S. Gensler, I Federal Rules of Civil Procedure: Rules and Commentary, Rule 12 (2014),

available at Westlaw FRCP-RC ("'There are four defenses-lack

of personal jurisdiction,

improper venue. insufficiency of process, and insufficiency of service of process-that

are

forfeited ifnot raised in the defendant's first response to the complaint .... ").
However. that strict reading of Rule 12 is not warranted here. Although Martin Door and
DirectBuy could have avoided this problem by uploading their Motions before their Answers,
their filing sequences are essentially a product of the constraints of the Court's electronic filing
system, which requires

that an answer and a motion be uploaded

6

separately

and thus

sequentially. As a practical marter, Martin Door and DirectBuy filed their respective Answers
and Motions contemporaneously, and the Court will treat them as so filed.
Treating Martin Door's and DirectBuy's Answers and Motions as contemporaneously
filed does not, however, immediately resolve the question of the timeliness of the Motions to
Dismiss. A number of courts-including

in this District-have

deemed untimely Rule 12(b)

motions filed contemporaneously with an answer. See, e.g., Young v. Prince George's Cnty.,
MD, No. DKC-II-1970, 2012 WL 1205105, at '2 (D. Md. Apr. 10, 2012) ("[BJecause

Defendants' motion was tiled contemporaneously with their 'partial answer,' treating the motion
as one to dismiss pursuant to Rule 12(b)(6) is improper."); RAe Home Loans Servicing LP v.
Fall Oaks Farm LLC, 848 F. Supp. 2d 818, 822 (S.D. Ohio 2012) ("Rule 12(b) permits only
sequential, not concurrent, filing of a motion to dismiss and an answer."). Other courts have
indicated in dicta that Fed R. Civ. P. 12(b) motions are timely if filed contemporaneously with
the answer. See, e.g., Roque v. UniredStales, 857 F.2d 20, 21 (1st Cir. 1988); Imperial Crane
Servs. v. Cloverdale Equip. Co., No. 13-C-04750, 2013 WL 5904527 at n.7 (N.D. Ill. Nov. 4,
2013).
Although these cases appear to otTer opposing interpretations of Fed R. Civ. P. 12(b),
upon closer examination they can be harmonized. Courts have read the filing requirements of
Rule l2(b) strictly, and so deemed a motion filed contemporaneously with an answer as
untimely, when the motion is a Rule l2(b)(6) motion; courts have given the filing requirements a
more flexible interpretation, and so deemed a motion filed contemporaneously with an answer as
timely, when the motion is made under Rule 12(h)(2)-(5). Compare Young, 2012 WL 1205105,
at *2 (requiring a l2(b)(6) motion to precede the answer), and RAC Home Loans, 848 F. Supp.
2d at 822 (same), with Roque, 857 F.2d at 21 (stating that a 12(b)(5) motion may be filed

7

contemporaneously

with an answer), and Imperial Crane Servs., 2013 WL 5904527 at n.7

(stating that a 12(b)(2) motion may be filed contemporaneously with an answer).
'Ibe implicit logic is sensible.

There is more at stake in 12(b)(2)-(5) motions than in a

12(b)(6) motion. The defenses under 12(b)(2)-(5) are lost if not timely asserted; the ground for
dismissal under 12(b)(6) remains available throughout a case, albeit with a different name. See
Fed R. Civ. P. 12(c); BAC Home Loans, 848 F. Supp. 2d at 823 (noting, when reading the rules
strictly in the context ofa 12(b)(6) motion, that doing so "presents no substantive prejudice ...
because [the defendant] can simply make its arguments post-answer through another mechanism
that complies with the Civil Rules").

Because, here, a strict interpretation of the procedural

requirements of Rule 12 would deprive Martin Door and DirectHuy of their personal jurisdiction
defense, a more permissive construction of the filing requirements is appropriate.
the Court accepts Defendants'
contemporaneously
II.

Accordingly,

Motions to Dismiss for Lack of Personal Jurisdiction,

filed

with their Answers, as timely.

)Iersonal Jurisdiction
A.

Choice of Law
In a patent case, the law of the Federal Circuit controls all substantive issues while the

law of the regional circuit controls all procedural questions.
Sovereixn

Corp., 21 F.3d 1558, 1564 (Fed. Cir. 1994).

considered a procedural question.

Beverly Hills Fan Co. v. Royal
Personal jurisdiction

is generally

However, the Federal Circuit has observed that personal

jurisdiction is "intimately related to substantive patent law" because it is a "critical determinant"
of a patentee's ability to seek redress. Id. Accordingly, the Federal Circuit has held that Federal
Circuit law, not regional circuit law, controls a court's determination of whether it can exert

8

personal jurisdiction over a defendant in a patent case. Id. This Court therefore applies Federal
Circuit law.
B.

Standard of Review
It is the plaintiff's burden to establish personal jurisdiction.

v. Alen Inl'l Co., 552 F.3d 1324, 1329 (Fed. Cir. 2008).

See Avocent Huntsville Corp.

To carry that burden at the pleading

stage. the plaintiff must make only a prima facie showing that the defendants are properly
subject to this Court's jurisdiction.

Id. In evaluating the plaintiff's showing, this Court must

accept the plaintiff's uncontroverted allegations as true and must resolve any factual conflicts in
the plaintiff's favor. Id. When the existing record is inadequate to support personal jurisdiction
over a defendant, the plaintiff is entitled to jurisdictional discovery if it can demonstrate that such
discovery would yield "additional facts" that would "assist the court in making the jurisdictional
determination."

Commissariat A L 'Energie Atomique v. Chi Mei Optoelectronics

Corp., 395

F.3d 1315, 1323 (Fed. CiT. 2005). See also Toys "R" Us, Inc. v. Slep Two, S.A., 318 F.3d 446,
456 (Fed. Cir. 2003) ("[C]ourts are to assist the plaintiff by allowing jurisdictional

discovery

unless the plaintiff's claim is clearly frivolous.") (internal quotation marks omitted).
C.

Legal }'ramework
Under Federal Circuit precedent, a federal district court can exert personal jurisdiction

over a non-resident defendant if two requirements are met. First, jurisdiction must be allowed
under the long-arm statute of the relevant state-in

this case, Maryland.

See Pennington Seed,

Inc. v. Produce Exchange No. 299,457 F.3d 1334, 1343-44 (Fed. CiT. 2006). With respect to the
meaning and scope of a state's long-ann statute, the Federal Circuit has "elect[edJ to defer to the
interpretations of the relevant state and federal courts."

Graphic Controls Corp. v. Utah Med.

Prods., Inc., 149 F.3d 1382, 1386 (Fed. Cir. 1998). Second, the exercise of jurisdiction under the

9

long-ann statute must comport with federal due process. Pennington Seed, Inc .• 457 F.3d at
1344. Because this is a patent action and therefore exclusively a matter of federal jurisdiction, it
is the due process clause of the Fifth Amendment that governs, but the Fifth Amendment
analysis, as developed by the Federal Circuit, is identical to the more familiar due process
analysis under the Fourteenth Amendment. Deprenyl Animal Health, Inc. v Univ. of Toronto
innovations Found, 297 F.3d 1343, \350 (Fed. Cie. 2002).

The Maryland Long-Ann Statute, Md. Code Ann., Cts. & Jud. Proc. S 6--103, authorizes
the exercise of personal jurisdiction to the limits permitted by the Due Process Clause of the
Fourteenth Amendment. See ALS Scan, Inc. v. Digital Servo Consultants, Inc., 293 F.3d 707. 710
(4th Cie. 2002); Beyand Systems. inc. v. Realtime Gaming Holding Co., 878 A.2d 567, 576 (Md.

2005). There may be cases. however, in which personal jurisdiction comports with federal due
process but which present factual scenarios outside the scope of the long-ann statute. Krashes v.
White, 34\ A.2d 798, 804 (Md. J 975). See a/so Dring v. Sullivan. 423 F. Supp. 2d 540, 545 (D.

Md. 2006) ("[T]o the extent that a defendant's activities are covered by the statutory language
[of the long-arm statute], the reach of the statute extends to the outermost boundaries of the due
process clause.") (quoting Joseph M. Coleman & Assocs., Ltd. v. Colonial Metals, 887 F. Supp.
I 16, 118.19 n.2 (D. Md. 1995)). Thus the jurisdictional analysis under the long-arm statute does
not simply collapse into the due process analysis. See Mackey v. Compass Mlag., Inc., 892 A.2d
479,493 n. 6 (Md. 2006) (explaining that although the "long arm statute is coextensive with the
limits of personal jurisdiction set by the due process clause," it is not "permissible to [ ] dispense
with analysis under the long-arm statute").

The long-arm and constitutional due process

requirements are, however, "interrelated," and so can be evaluated in tandem. Gee/hoed v.
Jensen, 352 A.2d 818, 82\ (Md. \976).

10

D.

Ilcrsonal.Jurisdiction
In the Complaint,

personal jurisdiction

(her Martin Door

FrenchPorte alleges that the following facts support a finding of

over Martin Door: (I) as stated on its website. Martin Door has an

authorized dealer, Av.ning Concepts using the trade name Shore Doors. that sells Martin Door's
products in Maryland; (2) multiple DirectBuy retailers located in Maryland sell Martin Door
products; and (3) at least 10-20 Martin Door garage doors have been sold in Maryland through
these distributors.

Compl.

'i~
6(b),

6(e), 7(b). and Ex. A.

Martin Door asserts in response that it has no oUkes, phone listings, mailing addresses,
agents, representatives, employees. property, or bank accounts in Maryland. and that it docs not
store any inventory in Maryland.
FrenchPortc's allegations.

Mot. Dismiss at 3-4.

However, it does not directly deny

In fact, Martin Door effectively ackno\\'ledges that it sells its garage

doors to Maryland residents out of its Utah headquarters.
its business plan "intentionally

Although Martin Door explains that

limits the geographic extent to which Martin Door delivers

garage doors to exclude Maryland,"

Mot. Dismiss at 6 (emphasis added). it does not. ho\\'ever,

limit the geographic extent to which Martin Door will sell its garage doors. Martin Door notes
that Maryland customers who wish to purchase Martin Door garage doors may do so directly
from the Salt Lake City manufacturing facility. Martin Door then "places the purchaser's garage
d{)or with a common carrier who transports the garage door to the customer pursuant to the
customer's instructions."
FrenchPorte's

[d. at 6-7.

allegations and Martin Door's resp{)nse thus establish that Martin Door

garage doors are sold to customers in Maryland.

For the reasons detailed below, the Court finds

that the nature and extent of th{)se business activities satisfy the requirements

11

()f

both federal due

process and the Maryland long-ann statute. such that this Court has personal jurisdiction over
Martin Door.
1.

Federal Due Process

A court may exert personal jurisdiction over a nonresident defendant in keeping with due
process if the defendant has "certain minimum contacts" with the forum state, "such that the
maintenance of the suit does not offend 'traditional notions of fair play and substantial justice.'"
Int'/ Shoe Co. v. Washington, 326 U.S. 310, 316 (1945)(quoting
(1940)).

Detennining

Milliken v. Meyer, 3\1 U.S. 457

whether a defendant has such contacts is a fact-specific undertaking.

Kulka v. Superior Court a/Cui., 436 U.S. 84, 92 (1978).
Personal jurisdiction is often discussed in tenns of "general" or "specific" jurisdiction.
court has general

personal

jurisdiction

when the defendant

maintains

"continuous

A
and

systematic" contacts with the forum state. Helicopteros Nacionales de Colombia. S.A. v. Hall,
466 U.S. 408, 414-16 (1984).

A court has specific personal jurisdiction when the defendant

purposefully establishes minimum contacts with, and directs activities at the residents of, the
forum state, and the cause of action arises out of those contacts.
Rudzewicz, 47\ U.S. 462, 472, 476-77 (1985); Auo
(Fed. Cir. 1995).

See Burger King Corp. v.

Corp. v. Luker, 45 F.3d 1541, \545-46

In cases similar to this one. however, the Federal Circuit has found the

general/specific rubric to be of limited use.

Instead, "[t]he analytical tool useful in cases in

which the defendant's contacts are the result of establishing a distribution network in the forum
State for the sale of defendant's
jurisdiction.

products" is the "stream of commerce theory" of personal

Viam Corp. v. lowa Export-Import Trading Co., 84 F.3d 424, 427 (Fed. Cit. 1996)

(internal quotation marks omitted).

Under that theory, a defendant is subject to personal

jurisdiction in a forum state jf it has '''purposefully

12

avail[ ed] itself of the privilege of conducting

activities within the forum State'" by placing its products "into the stream of commerce with the
expectation

that they will be purchased by consumers in the forum State."

World-Wide

Volkswagen Corp. v. Woodson, 444 U.S. 286, 297-98 (1980) (quoting Hanson v. Denckla, 357
U.S. 235, 253 (1958».
'Ibe Federal Circuit adopted the "stream of commerce" theory of personal jurisdiction
and applied it to patent cases in Beverly Hi//s Fan Company v, Royal Sovereign Corp., 2 I F.3d
1558 (Fed. Cif. 1994). In Beverly Hills Fan, the plaintiff, Beverly HilIs Fan Company, asserted a
claim of patent infringement in Virginia against a foreign fan manufacturer-Ultec-and
importer and distributor-Royal

Sovereign-alleging

its U.S.

that the defendants were selling a ceiling

fan that infringed Beverly Hills Fan's patent. Id. at 1560. To establish that the defendants were
subject to personal jurisdiction in Virginia, Beverly Hills Fan provided evidence that at least 52
of the allegedly infringing fans were available for sale through Builder's Square, a chain store
with six retail outlets in Virginia, and that at least one fan was actually sold in the state, Id. at
1560,1564.

Ultec, headquartered in Taiwan, and Royal, incorporated in New Jersey, each filed

motions to dismiss for lack of personal jurisdiction in which they averred that they had no assets
or employees in Virginia, had no agent for service of process in Virginia, and were not licensed
to do business Virginia.
accused fan into Virginia.

Id. at 1560. Ultec also asserted that it had not directly shipped the
Id

Unpersuadcd by defendants' arguments, the court found that

because "defendants purposefully shipped the accused fan into [the forum state] through an
established distribution channel," they were subject to personal jurisdiction in that forum. /d. at
1565.
Beverly Hi//s Fan is dispositive here. FrenchPorte has alleged, and Martin Door has not
directly refuted, that Martin Door has a distribution network in Maryland consisting of four retail

13

outlets-three

DirectBuy showrooms and Shore Doors, which Martin Door identifies on its

website as an authorized dealer-through which a minimum of 10-20 allegedly infringing doors
have been sold in Maryland. The facts here thus essentially parallel those in Beverly Hills Fan.
Indeed, if anything, the facts tie Martin Door more closely to the forum state. The manufacturer
in Beverly Hills Fan argued that because it was at one remove from the retailers-the
manufacturer shipped the fans to a U.S. distributor, which then supplied the retail outlets in
Virginia-there

was no evidence that the shipment of its product to Virginia was "purposeful or

knowing." /d. at 1564. Here, by expressly announcing on its website that Shore Doors is an
authorized Martin Door retailer, Martin Door has acknowledged that it is specifically aware that
its products are being shipped to and sold in Maryland. Thus, Martin Door has purposcfuJly
created a distribution network to Maryland in order to create and serve a market for its products
in Maryland, so is properly subject to suit here. World-Wide Volkswagen, 444 U.S. at 297 ("lIJf
the sale of a product ... is not simply an isolated occurrence, but arises from the efforts oflthe
defendant] to serve, directly or indirectly, the market for its product ... it is not unreasonable to
subject it to suit.").
Moreover, Martin Door's admission that it has an existing process to sell doors to
Maryland customers directly from its Utah headquarters further establishes that it purposely
directs its product in the stream of commerce to Maryland. See Mot. Dismiss at 2. In describing
this process in an effort to establish that it has intentionally structured its business so as to
"avoid[ ] the risk of being sued in Maryland," Mot. Dismiss at 7-8, Martin Door seeks to
analogize its situation to that of the defendant in World-Wide Volkswagen.

But the analogy does

not hold. In World-Wide Volk'iWagen, the Court held that a New York car dealership that sold a
car to a New York family that later moved to Oklahoma could not reasonably have foreseen that

14

one of its cars would cause an injury in Oklahoma, given that the relocation of the vehicle was a
unilateral action by the car owner perfonned without the knowledge or involvement of the
defendant dealership. 444 U.S. at 288, 298-89. Here, when a Maryland consumer orders a
Martin Door garage door, Martin Door is aware of and indeed facilitates the transport of the
product to Maryland by providing the garage door to a common carrier with the customer's
instructions to ship it to Maryland. Mot. Dismiss at 3-4. Martin Door thus knows that its actions
will lead to delivery of the product to its customer in Maryland, and therefore this case is easily
distinguishable from the kind of unilateral action rejected as a basis for jurisdiction in WorldWide Volkswagen. See Beverly Hills Fan, 21 FJd at 1566 (noting that personal jurisdiction was

proper when defendant placed the fan in the stream of commerce and "knew the likely
destination of the products").
The fact that, as Martin Door asserts, FrenchPorte does not establish that there is an
agency relationship between Martin Door and one of its Maryland retailers-specifically,
Awning Concepts-is beside the point. See Resp. to Mot. for Juris. Disc. at 3-4. As illustrated
by Beverly Hills Fan, the stream-of-commerce theory of personal jurisdiction makes a defendant
subject to jurisdiction based on its purposeful placement of its products into the market of the
forum slate. It does not require a defendant's physical presence in the state, either personally or
through an agent. See Beverly Hills Fan, 21 FJd at 1560 (noting that neither defendant was
incorporated or had an agent in the forum state).
Martin Door also suggests that any business it does with Maryland is too insignificant to
confer personal jurisdiction. Martin Door notes that in any given year, "[r]evenue from sales by
Martin Door of ganlge doors to customers in Maryland" is "less than one-tenth of one percent"
of its overall revenue. Mot. Dismiss at 4. As a due process matter, however, there is no

15

requirement that the flow of commerce reach a particular threshold volume. See Beverly Hills
Fan, 21 F.3d at 1571 (finding personal jurisdiction from the presence of approximately 50 fans
in the state). Any showing that a defendant's business in a forum state generates "substantial
revenue" is required only by a state long-ann statute, not due process.2 See id. (analyzing the
"substantial revenue" requirement contained in Virginia's long-arm statute); Stabilisierungsfond'i
Fur Wein v. Kaiser Stuhl Wine Distributurs Ply. Ltd, 647 F.2d 200, 206 (D.C. CiT. 1981)

(considering the "substantial revenue" requirement contained in the District of Columbia's longarm statute). For due process, it is enough that Martin Door has placed its products into the
stream of commerce and done so with the knowledge that one mouth of that stream is in the
forum state. In doing so, Martin Door has purposefully and successfully availed itself of the
privilege of doing business in Maryland, and so has the "certain minimum contacts" with the
state necessary to make it subject to personal jurisdiction here. International Shoe, Co., 326 U.S.
at316.
Even if, as here, a plaintiff can establish that a defendant has the requisite minimum
contacts to be subject to personal jurisdiction in a particular court. the defendant can still defeat
jurisdiction "by marshaling a compelling case against jurisdiction on the grounds that its exercise
would be unreasonable, land] contrary to concepts of fair play and substantial justice." Viam
Corp. v. Iowa Export-Import Trading Co., 84 F.3d at 429. This "unreasonableness" test is a

"multi-factored balancing test" weighing the burden the case places on the defendant against the
plaintiffs interest in a convenient forum and the forum's interest in resolving the controversy.
Id; see generally Burger King, 471 U.S. at 477. It is a difficult test for a defendant to pass:

"these cases are limited to the rare situation in which the plaintiffs interest and the state's
In Maryland, a showing of substantial revenue is required under only one section of the longarm statute: ~ 6-103(b)(4).
2

16

interest In adjudicating

the dispute in the forum are so attenuated that they are clearly

outweighed by the burden of subjecting the defendant to litigation within the forum."

Beverly

lIills Fan, 21 F.3d at 1568.
In arguing that a finding of personal jurisdiction in Maryland would be unreasonable,
Martin Door largely rehashes its due process arguments.
headquartered
burdensome.

Martin Door adds that, because it is

"more than a thousand miles away," defending

against the suit is unduly

Mot. Dismiss at 9. Martin Door also asserts that because, in its estimation, it has

"no material contacts" with Maryland, this Court has no legitimate interest in resolving this
dispute, nor are there any social policy concerns that would override these other factors. Id at
10.
These arguments are unpersuasive.

Even as early as 1957, the Supreme Court noted that

'''modern transportation and communication have made it much less burdensome for a party sued
to defend himself in [another state]."

McGee v. Inl'l Life Ins. Co., 355 U.S. 220, 223 (1957).

That is all the more true now. Moreover, Martin Door is a substantial enterprise with a global
reach, manufacturing over 600 garage doors per day and exporting its products to nearly 100
countries. See Compl. Ex. O. In light of its international presence, Martin Door presumably has
the resources and infrastructure to defend an out-of-state suit.

Furthermore, Maryland has a

substantial and legitimate interest in the resolution of this dispute, both because FrenchPorte is a
Maryland company and because each state has an abiding interest in "discouraging injury within
its borders."

Deprenyl, 297 F.3d at 1356. Consequently, considering all of the relevant factors,

this is not the "rare case" in which the defendant has demonstrated that subjecting it to personal
jurisdiction in this Court would be so unreasonable as to violate a sense of fair play and deprive
the defendant of substantial justice.

17

2.

Maryland L()n~-Arm Statute

Having established

that personal jurisdiction

over Martin Door comports

with due

process, the Court must next consider whether it is also authorized by at least one prong of
Maryland's long-arm statute, which provides, in relevant part:
(a) If jurisdiction over a person is based solely upon this section,
he may be sued only on a cause of action arising from any act
enumerated in this section.
(b) A court may exercise personal jurisdiction over a person, who
directly or by an agent:
(1) Transacts any business or performs any character of work
or service in the State;
(2) Contracts to supply goods, food, services, or manufactured
products in the State;
(3) Causes tortious injury in the State by an act or omission in
the State;
(4) Causes tortious injury in the State or outside of the State by
an act or omission outside the State if he regularly does or
solicits business, engages in any other persistent course of
conduct in the State or derives substantial revenue from
goods, food, services, or manufactured products used or
consumed in the State;
Md. Code Ann., Cts. & Jud. Proc.

S 6-103

(West 2014).

In addition, "[tlhe provisions in this section apply to computer information

and computer

progrdms in the same manner as they apply to goods and services." Id. ~ 6-103(c)(2).
A plaintiff is required, in either its complaint or its opposition to a Rule 12(b)(2) motion,
to identify the specific provision(s) of the long-arm statute that authorizes jurisdiction.

See

Ottenheimer Publishers, Inc. v. Playmore, Inc., 158 F. Supp. 2d 649, 652 (D. Md. 2001);
Johansson

Corp. v. Bowness Consl. Co., 304 F. Supp. 2d 701, 704 n. I (D. Md. 2004).

Believing that, in Maryland, the long-arm analysis "collapses" into the due process analysis,
(Opp'n Mot. Dismiss at 6), FrenchPorte has not specifically identified the particular provisions

18

of the long-arm statute that it believes confer jurisdiction. However, the allegations in the
Complaint track the language of the statute closely enough for the Court to draw the relevant
conclusions.
Echoing the language of ~ 6-103(b)(I), FrenchPorte asserts in its Complaint that this
Court has personal jurisdiction over Martin Door because it "transacts business in the State of
Maryland." Compl. ~ 6(a). FrenchPorte also asserts that this Court has personal jurisdiction
over Martin Door because it has "caused and is causing tortious injury in this State," tracking the
language of ~ 6-I03(b)(3). Id. ~ 6(b). Drawing on the language of ~ 6-103(b)(4), FrenchPorte
further asserts that this Court has personal jurisdiction over Martin Door because it has "caused
and is causing tortious injury in the State ...

and outside this State" by "deriving substantial

revenue from the use in this State ... of 'computer information' and 'computer programs.'" Id.

'1

6(c). And in its Response to Defendants' Motions, FrenchPorte asserts that ~ 6-103(b)(2)

"does not exempt one who supplies. ..

goods or products in Maryland by using common

carriers," and so, by implication, asserts that this Court has personal jurisdiction over Martin
Door under ~ 6-103(b)(2) because Martin Door "lcJontracts to supply goods, food, services, or
manufactured products in the State." Resp. at 15.
Although FrenchPorte alleges jurisdiction under four provisions of the long-arm statute,
only one provision need be satisfied for this Court to exercise jurisdiction. C.\:f) Antenna, Inc. v.
Amphenol-Tuchel

Electronics, GmbH, 764 F. Supp. 2d 745, 748-49 (D. Md. 2011) (citing Bahn

v. Chicago Molor Club Ins. Co., 634 A.2d 63, 67 (Md. Ct. Spec. App. 1993)). Here, for the

reasons outlined below, the Court finds that FrenchPorte's allegations satisfy the requirements of

S 6-103(b)(I), so an analysis of the applicability of the remaining long-arm provisions is
unnecessary.

19

Section 6-103(b)(l)

confers personal jurisdiction over a defendant who "[t]ransacts any

business" in Maryland. This is not a demanding standard. A nonresident company or individual
who has never entered the state, either personally or through an agent, may nevertheless be
deemed to have transacted business in Maryland.

See Snyder v. Hampton Indus., Inc., 521 F.

Supp. 130, 141 (D. Md. 1981). A single transaction may suffice. Jason Pharm., Inc., v. Jiana.\'
Bros. Packaging

Co., 617 A.2d 1125, 1128-29 (Md. 1993) (finding that a one-transaction

contract was sufficient basis for personal jurisdiction).

All that is required is a showing that the

defendant has engaged in some "actions that culminate in purposeful activity within the state"
relating to one or more elements of the cause of action. Aphena Pharma Solutions-Maryland
LLC v. Biozone Labs., Inc., 912 F. Supp. 2d 309, 315 (0. Md. 2012)(quuting
67). Thus, Martin Door is subject to personal jurisdiction under

9 6-103(b)(I)

Bahn, 634 A.2d at
if it has engaged

in actions that culminate in purposeful activity relating to selling its allegedly infringing products
within the state of Maryland. ]
Martin Door's creation of a distribution network leading to Maryland, including tapping
Awning Concepts as an "Authorized Dealer," sending its product in the flow of commerce to
DirectBuy retailers in Maryland, and arranging for common-carrier shipments of its product to
Maryland customers, culminated in the sale of at least 10.20 garage doors to Maryland retailers
and customers.

Such deliberate and successful efforts to access the Maryland market necessarily

culminate in purposeful activity within the state sufficient to constitute transacting business
under

9 6-103(b)(I).

See Potomac Design, Inc. v. Eurocal Trading, Inc., 839 F. Supp. 364, 368-

70 & n.14 (0. Md. 1993) (finding personal jurisdiction under ~ 6- J03(b)( I) over a non-resident

] Plainly, this statutory determination is intertwined with the constitutional due process analysis.
See CSR, Ltd v. Taylor, 983 A.2d 492, 502-03 (Md. 2009) (explaining that ~ 6-103(b)(I) "must
be read with a constitutional gloss").
20

company with national advertising that led to a sale by phone and mail of its product to a
Maryland customer and shipment of that product into Maryland through a common carrier);
Copiers Typewriters Calculators, Inc. v. Toshiba Corp., 576 F. Supp. 312, 319-20 (D. Md. 1983)
(finding that. under a combined statutory and constitutional analysis, a company that had placed
its products in the stream of commerce had "purposely availed itself of the privilege of selling
within [Maryland]" and so was subject to personal jurisdiction).

E.

Personal Jurisdiction Over Direct Huy
Determining whether there is personal jurisdiction over DirectBuy. under both the due

process and Maryland long-arm statute analyses, is a more difficult enterprise.

As FrenchPorte

alleges and DirectBuy does not deny, there are three DirectBuy franchises in Maryland that sell
Martin Door's allegedly infringing products. However, ••
the mere fact that a frdI1chisor has
franchisees in a particular state does not subject it to that state's jurisdiction."

Rundquist v.

Vapiano SE, 798 F, Supp. 2d 102, 114 (D,D.C, 2011) (quoting Santora v. Starwood Hotel &
Resorts Worldwide, Inc., 580 F. Supp. 2d 694, 700 (N.D. JII, 2008)). As a matter of due process,
there must be evidence beyond the mere existence of the franchise agreement that the defendant
has deliberately reached out and "purposefully direct[ cd]" its activity toward the forum state.
Burger King Corp. v. Rudzewicz,471

U.S. 462, 472 (1985); Choice Hotels Int'l, inc. v, Madison

Three, Inc., 23 F, Supp. 2d 617, 621 (D. Md, 1998) (same).
As for the long-ann statute, FrenchPorte contends that there is personal jurisdiction over
DirectBuy pursuant to ~ 6-103(b)(I)

(transacting business), ~ 6-103(b)(3)

(causing tortious

injury), and ~ 6-103(b)(4) (causing tortious injury by deriving substantial revenue from the use in
this State of "computer information" and "computer programs"). See Compl. '~7(a)-(c).

But, as

with due process, the mere fact that a franchisor has a franchise in Maryland does not make it

2t

subject to personal jurisdiction here. Instead, the franchise agreement must "imposeD significant
contractual duties," such as "reporting and payment obligations" in order to tether the franchisor
to the actions of the franchisee. Choice Hotels, 23 F. Supp. 2d at 621.
Here, DirectBuy asserts that its Maryland franchises are independently

owned and

operated, and that DirectBuy "does not control or direct the[ir] business transactions."

Mot.

Dismiss at 2. Although DirectBuy may not control its franchisee's "business transactions"-a
term that itself requires illumination-it

may maintain a degree of control over those franchises

and impose on them contractual duties that would make DirectBuy susceptible to personal
jurisdiction in Maryland. As the record currently stands, however, this Court has no information
about DirectBuy's franchise agreements with its Maryland franchises, and so cannot determine if
exerting personal jurisdiction over DirectBuy would be consistent with federal due process and
the requirements of Maryland's long-arm statute.4
It is the plaintiWs burden to make a prima facie showing that a defendant is subject to
personal jurisdiction in plaintiWs chosen forum. In this case, however, the crucial infonnationthe exact contours of DirectBuy's

franchisor-fnmchisee

FrenchPorte at the time FrenchPorte filed its complaint.

relationship-was

not available

Because FrenchPorle's

to

assertion of

personal jurisdiction is not plainly frivolous, and because there are easily obtainable, additional
facts that would enable this Court to resolve the. personal jurisdiction
accordingly orders limited jurisdictional

question, the Court

discovery from DirectBuy, the terms of which are

The Court docs not find personal jurisdiction over DirectBuy by virtue of its computer
activities. See Md. Code Ann., Cts. & Jud. Proc. ~ 6-103(b)(4), (c). FrenchPorle has made no
showing that OirectBuy has a web presence, much less that its web presence is anything other
than the kind of "passive" presence that docs not provide grounds for personal jurisdiction.
Allcarrier Worldwide Servs. Inc. v. United Network Equip. Dealer Ass 'n, 812 F. Supp. 2d 676,
684 (0. Md. 20 II).
4

22

outlined in the accompanying order. See Mylan Laboratories. Inc. v. Akzo. N. v.. 2 F.3d 56, 64
(4th Cir. 1993) ("Discovery under the Federal Rules of Civil Procedure is, of course, broad in
scope and freely permitted ...

[and] ...

limited discovery may be warranted to explore

jurisdictional facts").
111.

Martin Door's Motion in the Alternati"e to Transfer Venue

In the alternative, Martin Door moves to transfer venue under 28 U.S.c. ~ 1404(a) to the
District of Utah. 28 U.S.C.

S

1404(a) provides that "[I]or the convenience of parties and

witnesses, in the interest of justice, a district court may transfer any civil action to any other
district or division where it might have been brought:' Because transfer of venue is a procedural,
not substantive, question, the law of the regional circuit controls. Storage Tech. Corp. v. Cisco
Sys .. Inc., 329 F.3d 823, 836 (Fed. Cir. 2003). It is the moving party's burden-here,

Door-to

Martin

show that, on balance, case-specific factors warrant that the case be transferred to

another forum. See Cross v. Fleet Reserve Ass 'n Pension Plan, 383 F. Supp. 2d 852. 856 (D.
Md. 2005). To carry that burden, "the defendant must show by a preponderance of the evidence
that the proposed transfer will better and more conveniently serve the interests of the parties and
witnesses and better promote the interests of justice." Helsel v. Tishman Realty Constr. Co., 198
F. Supp. 2d 710, 711 (D. Md. 2002) (internal quotation marks omitted). This is a difficult task:
"deference is generally given to a plaintiff's choice of forum," CoStar Realty Info., Inc. v.
Meissner. 604 F. Supp. 2d 757, 773 (D. Md. 2009), and that choice "should rarely be disturbed."
Collins v. Straight, 748 F.2d 916, 921 (4th Cif. 1984) (quoting Gulf Oil Corp. v. Gilbert, 330

U.S. 501, 508 (1946)).
In deciding a motion to transfer venue, the district court must weigh a number of casespecific factors, including "[I] the private interest of the litigant ... [2] the relative ease of access

23

to sources of proof; [and] [3] the cost of obtaining attendance of willing [and unwilling]
witnesses. Gulf Oil Corp. v. Gilbert, 330 U.S. 501,508 (1947). Also relevant is the "local
interest in having a localized controversies settled at home." Brown v. Stal/worth, 235 F. Supp.
2d 453, 456 (D. Md. 2002) (quoting Choice Hotels Int 'I, Inc. v. Madison Three, Inc., 23 F. Supp.
2d 617, 622 n.4 (D. Md. 1998)).
Martin Door argues that Utah is a more appropriate venue for this case because "'all of its
files, sales and revenue records, technical information, [and] likely witnesses [are] in Utah."
Mot. Dismiss at 11-12. In addition, Martin Door contends that FrenchPorte's choice of forum
should be given little weight because "none of the conduct complained of occurred in the forum
selected." Jd at 12. FrenchPorte counters that Utah would be "'extremely inconvenient" for its
principals, all of whom live and work in Maryland, and emphasizes that its choice of forum is to
be given "substantial, ifnot controlling, weight." Opp'n Mot. Dismiss at 19-20. Based on these
arguments, the convenience factor is effectively neutral.
Martin Door's insistence that this case is unconnected to Maryland is similarly not
persuasive.

According to FrenchPorte's uncontested allegations, there has been offending

conduct in Maryland, namely the sale of Martin Door products that FrenchPorte alleges infringe
upon its patents. Furthermore. FrenchPorte is a Maryland company, a fact that provides a clear
connection between this case and this forum. See Dicken v. United States. 862 F. Supp. 91. 93
(D. Md. 1994) (explaining that the relative convenience of the parties as a "relevant transfer
factor" is "chiefly operative in cases where the plaintiff chooses a forum away from either
party's horne"). Martin Door's arguments in favor of transferring venue thus do not overcome
its heavy burden.

24

CONCLUSION
For the foregoing reasons, Martin Door's Motion to Dismiss or, in the Alternative to

Transfer Venue is DENIED. The Court DEFERS DirectBuy's Motion to Dismiss pending
jurisdictional

discovery, and DISMISSES AS MOOT FrenchPorte's

Motion for Jurisdictional

Discovery as to Martin Door. A separate order will follow.

Date:

Tr/J4lAi t, I

THEODORE D. Cl A
United States District Ju

25