Petedge,Inc. v. Fortress Secure Solutions, LLC

Filing 24

Judge F. Dennis Saylor, IV: ORDER entered. Memorandum and Order on Defendant's Motion to Dismiss. (Pezzarossi, Lisa)

UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS
_____________________________________
)
PETEDGE, INC.,
)
)
Plaintiff,
)
)
v.
)
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FORTRESS SECURE
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SOLUTIONS, LLC,
)
)
Defendant.
)
_____________________________________)

Civil Action No.
15-11988-FDS

MEMORANDUM AND ORDER ON
DEFENDANT’S MOTION TO DISMISS
SAYLOR, J.
This is an action for patent and trademark infringement. Plaintiff PetEdge, Inc., is a
Massachusetts-based pet products manufacturer. PetEdge owns U.S. Patent No. 7,621,236 (“the
’236 patent”) for a set of folding steps that convert into a ramp for pets to climb on to a bed. It
markets the steps under the PET STUDIO family of marks, which includes U.S. Trademark Reg.
No. 4,759,263.
Defendant Fortress Secure Solutions, LLC is a Washington limited liability company that
sells pet products (and security systems) through national online retailers. The complaint alleges
that Fortress produces and sells a product that infringes on the ’236 patent and the PET STUDIO
mark.
Fortress has moved to dismiss pursuant to Fed. R. Civ. P. 12(b)(2) for lack of personal
jurisdiction. For the following reasons, the motion will be denied.

I.

Background
A.

Procedural Background

On June 1, 2015, PetEdge filed suit against Fortress. The complaint alleges (1) patent
infringement in violation of 35 U.S.C. § 271(a)-(c); (2) Lanham Act trademark infringement in
violation of 15 U.S.C. § 1114(1); (3) Lanham Act unfair competition and false designation of
origin in violation of 15 U.S.C. § 1125(a); (4) common-law trademark infringement;
(5) common-law unfair competition; and (6) unfair and deceptive trade practices in violation of
Mass. Gen. Laws ch. 93A. (Compl. ¶¶ 25-62).
On June 29, 2015, Fortress moved to dismiss the complaint for lack of personal
jurisdiction under Fed. R. Civ. P. 12(b)(2). That motion was not accompanied by any affidavits.
In response, PetEdge filed an opposition and a declaration by its president and CEO, Andrew
Katz, on July 13, 2015. On July 20, 2015, Fortress filed a motion for leave to file a reply to
PetEdge’s opposition. The Court granted Fortress’s motion, and with its reply, Fortress also
filed a declaration by its president, Michael Hofeditz. PetEdge then moved to strike the Hofeditz
declaration as new evidence under Local Rule 7.1(b)(1) and for failure to confer under Local
Rule 7.1(a)(2).
B.

Factual Background

Fortress Secure Solutions, LLC is a limited liability company based in Walla Walla,
Washington. (Hofeditz Decl. ¶ 2). Fortress does not have an office in Massachusetts and is not
registered to do business in the Commonwealth. (Id. at ¶¶ 3-4). Fortress does not pay taxes in
Massachusetts. (Id. at ¶ 4). Fortress contends that it does not “specifically design or target any
of its products for sale in Massachusetts,” and does not “market its products to Massachusetts
customers.” (Id. at ¶¶ 5-6).

2

Fortress does, however, market and sell products through online retailers to customers
across the United States. (Id. at ¶ 7). Fortress products are available for purchase and delivery in
Massachusetts, but only through online retailers such as Amazon.com and PetStew.com. (Katz
Decl. ¶¶ 7, 10).
Under the alternative name of “Techege,” Fortress advertised and offered for sale a
product called the “Pet Studio Pine Frame Dog RampSteps, 3 Step” on Amazon.com. (Id. at
¶ 7). 1 Massachusetts Internet shoppers could view that product if they searched for “Pet Studio
ramp steps” on Amazon.com. (Katz Decl. Ex. 1). Below the description of Fortress’s product,
in the “customers who viewed this item also viewed” section, Amazon.com listed two sets of
patented ramp steps sold by PetEdge under its PET STUDIO mark. (Id.). PetEdge’s three-step
product was sold at a higher price than Fortress’s “Pet Studio Pine Frame Dog RampSteps.”
(Id.).
Two Massachusetts PetEdge employees independently discovered the Fortress product on
Amazon.com and purchased it. (Katz Decl. ¶¶ 7-8). Both sets of ramp steps were shipped to the
PetEdge employees at their Massachusetts homes. (Id.). The record does not indicate whether
Fortress sold its allegedly infringing product directly to Massachusetts residents through
Amazon.com (and thus shipped the product itself), or whether it sold its product directly to
Amazon.com without further contact with the end customers. Fortress also appears to sell other
products on Amazon.com that are available for purchase by Massachusetts residents. (Id. at
¶ 13).

1

The “Techege” name appears in small font under the larger name of the product on Amazon.com. (Katz
Decl. Ex. 1).

3

PetEdge is a Massachusetts corporation that develops and distributes pet products,
including a patented set of folding steps that convert into a ramp for pets to climb on to a bed.
(Id. at ¶¶ 1, 3). PetEdge contends that Fortress’s product infringes on its ’236 patent and PET
STUDIO marks. (Id. at ¶¶ 7, 9).
II.

Standard of Review
In determining whether a district court has personal jurisdiction over an out-of-state

alleged patent infringer, the law of the Federal Circuit, rather than that of the regional circuit in
which the district court sits, applies. Nuance Commc’ns, Inc. v. Abbyy Software House, 626 F.3d
1222, 1230 (Fed. Cir. 2010). But in trademark infringement disputes, the jurisdictional inquiry is
governed by the law of the circuit in which the district court sits. See, e.g., Edvisors Network,
Inc. v. Educational Advisors, Inc., 755 F. Supp. 2d 272, 284 (D. Mass. 2010) (applying the
constitutional due-process test as interpreted by the First Circuit).
Where, as here, a district court considers a motion to dismiss for lack of personal
jurisdiction in a patent case without first holding an evidentiary hearing, the court must resolve
all factual disputes in the plaintiff’s favor. Deprenyl Animal Health, Inc. v. University of
Toronto Innovations Found., 297 F.3d 1343, 1347 (Fed. Cir. 2002). The court then applies the
prima facie standard to determine whether it has jurisdiction over the defendant. Trintec Indus.,
Inc. v. Pedre Promotional Prods., Inc., 395 F.3d 1275, 1282 (Fed. Cir. 2005). The prima facie
standard is the “‘most conventional’ of the[ ] methods” for determining personal jurisdiction.
Daynard v. Ness, Motley, Loadholt, Richardson & Poole, P.A., 290 F.3d 42, 51 (1st Cir. 2002)
(quoting Foster-Miller, Inc. v. Babcock & Wilcox Can., 46 F.3d 138, 145 (1st Cir. 1995)). In
conducting a prima facie analysis, the court examines the existing record in the light most
favorable to the plaintiff to determine whether facts sufficient to support jurisdiction over the

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defendant have been alleged. See Trintec, 395 F.3d at 1282. The plaintiff bears the burden of
making a sufficient showing on “all of the necessary ingredients for an exercise of jurisdiction
consonant with due process.” Beverly Hills Fan Co. v. Royal Sovereign Corp., 21 F.3d 1558,
1566 (Fed. Cir. 1994).
III.

Analysis
PetEdge contends that the Court has specific jurisdiction over Fortress because (1)

PetEdge is the registered owner of the ’236 patent and the PET STUDIO marks, (2) Fortress’s
product infringes on the ’236 patent and the PET STUDIO marks, and (3) Fortress purposefully
directed its activities at Massachusetts residents by offering its product for sale through online
retailers in Massachusetts and selling at least two products to Massachusetts residents.
Specifically, PetEdge contends that Fortress’s patent infringement is an intentional tort
purposefully directed at harming its Massachusetts sales.
Fortress contends that this case should be dismissed for lack of personal jurisdiction
because it does not specifically target Massachusetts consumers. Fortress further contends that
the Court cannot exercise jurisdiction over it merely based on two Massachusetts sales that were
initiated by PetEdge’s employees.
The complaint alleges patent infringement and multiple claims of trademark
infringement. Because those claims are governed by different jurisdictional standards, the Court
will begin with PetEdge’s patent-infringement claim, which is governed by the law of the
Federal Circuit.
A.

PetEdge’s Patent-Infringement Claim

“In order to establish personal jurisdiction in a patent infringement case over a nonresident defendant whose products are sold in the forum state, a plaintiff must show both that the

5

state long-arm statute applies and that the requirements of due process are satisfied.”
Commissariat a l’Energie Atomique v. Chi Mei Optoelectronics Corp., 395 F.3d 1315, 1319
(Fed. Cir. 2005). When interpreting a state long-arm statute in the patent-infringement context, a
district court should “defer to the interpretations of the relevant state and federal courts,
including their determinations regarding whether or not such statutes are intended to reach to the
limit of federal due process,” rather than look to the Federal Circuit for guidance. Graphic
Controls Corp. v. Utah Med. Prods., 149 F.3d 1382, 1386 (Fed. Cir. 1998).
In Massachusetts, a federal court assessing personal jurisdiction may proceed directly to
the constitutional analysis, because “the Supreme Judicial Court of Massachusetts has interpreted
the state’s long-arm statute as an assertion of jurisdiction over [a] person to the limits allowed by
the Constitution of the United States.” Adams v. Adams, 601 F.3d 1, 5 (1st Cir. 2010). Those
limits “require[ ] only that in order to subject a defendant to a judgment in personam, if
[defendant] be not present within the territory of the forum, [defendant] have certain minimum
contacts with it such that the maintenance of the suit does not offend ‘traditional notions of fair
play and substantial justice.’” Akro Corp. v. Luker, 45 F.3d 1541, 1545 (Fed. Cir. 1995) (quoting
International Shoe Co. v. Washington, 326 U.S. 310, 316 (1945)).
A district court may exercise either specific or general jurisdiction over an alleged patent
infringer. “‘Specific’ jurisdiction refers to the situation in which the cause of action arises out of
or relates to the defendant’s contacts with the forum. It contrasts with ‘general’ jurisdiction, in
which the defendant’s contacts have no necessary relationship to the cause of action.” Beverly
Hills Fan, 21 F.3d at 1562 n.10 (citations omitted).
There is no dispute here that the Court does not have general jurisdiction over Fortress.
For specific jurisdiction, the Federal Circuit applies a three-prong test to determine if the due-

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process requirements have been met: “(1) whether the defendant purposefully directed activities
at residents of the forum; (2) whether the claim arises out of or relates to those activities; and (3)
whether assertion of personal jurisdiction is reasonable and fair.” Nuance Commc’ns, 626 F.3d
at 1231 (citing Akro, 45 F.3d at 1545-46).
1.

Purposefully Directed Activities

The first prong of the Federal Circuit test for specific jurisdiction is aimed at determining
whether the defendant has a sufficient quantum of “minimum contacts” with the forum state to
satisfy the requirements of the Due Process Clause. See Inamed Corp. v. Kuzmak, 249 F.3d
1356, 1360 (Fed. Cir. 2001) (“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.”).
It is undisputed that two Massachusetts residents purchased Fortress’s allegedly
infringing product; that they purchased the product through Amazon.com; and that both
individuals were employees of PetEdge. 2 PetEdge contends that Fortress committed an
intentional tort because even though it had constructive notice of the ’236 patent under the patent
marking statute, 35 U.S.C. § 287(a), it offered its allegedly infringing product for sale in
Massachusetts and sold it to at least two Massachusetts residents. That intentional tort of

2
As noted, the record does not indicate whether Fortress sold its allegedly infringing product directly to
Massachusetts residents or whether it sold its product directly to Amazon.com without further contact with the end
customers.

For two reasons, the Court will proceed under the assumption that Fortress, not Amazon.com, shipped its
product into Massachusetts. First, the Court must resolve all factual disputes in the plaintiff’s favor on a motion to
dismiss for lack of personal jurisdiction. See Deprenyl Animal Health, Inc. v. University of Toronto Innovations
Found., 297 F.3d 1343, 1347 (Fed. Cir. 2002). Here, Fortress has provided no evidence that it did not ship its
product to Massachusetts. Second, it appears that the default setting on Amazon.com is that the seller ships the item
directly to the buyer, unless the item has a label that reads “fulfilled by Amazon.” See, e.g., Milo & Gabby, LLC v.
Amazon.com, Inc., 2015 WL 4394673, at *14 (W.D. Wash. July 16, 2015). Here, Fortress’s product had no such
label. (See Katz Decl. Ex. 1). For those reasons, the Court will assume that if Fortress sold its product through
Amazon.com, it shipped it directly to two Massachusetts consumers.

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infringement, PetEdge contends, caused it economic harm in Massachusetts where the product
was offered for sale and sold.
At least in the context of interpreting state long-arm statutes, the Federal Circuit has
consistently held that a patent infringer is subject to personal jurisdiction where it sells the
allegedly infringing product. Two cases are illustrative of the court’s reasoning.
First, in Beverly Hills Fan Co. v. Royal Sovereign Corp., 21 F.3d 1558, 1569 (Fed. Cir.
1994), the Federal Circuit considered the issue of where a defendant’s patent infringement causes
a patentee injury. The case involved the application of Virginia’s long-arm statute, which
required the defendant to “caus[e] tortious injury in [Virginia] by an act or omission outside
[Virginia] . . . .” Id. The court rejected the rule that “the situs of the injury is the situs of the
intangible property interest, which is determined by where the patent owner resides.” Id. at
1570. Instead, the court, comparing patent infringement to an intentional tort, held that “the situs
of the injury is the location, or locations, at which the infringing activity directly impacts on the
interests of the patentee, here the place of the infringing sales.” Id. at 1571. The Court reasoned
that “[e]conomic loss occurs to the patent holder at the place where the infringing sale is made
because the patent owner loses business there [and the] loss is immediate when the patent holder
is marketing a competing product.” Id.
Second, in North American Philips Corp. v. American Vending Sales, Inc., 35 F.3d 1576,
1579 (Fed. Cir. 1994), the Federal Circuit clarified its intentional-tort analogy, noting that:
[W]hile it may be appropriate to speak loosely of patent infringement as a tort,
more accurately the cause of action for patent infringement is created and defined
by statute [in 35 U.S.C. § 271(a)] . . . [and that] statute does not speak generally
of the ‘tort of patent infringement,’ but specifically of a liability that arises upon
the making, using, or selling of an infringing article.

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Id. (citation omitted). Despite its clarification of the intentional-tort analogy, the court reached
the same result as it did in Beverly Hills Fan. Reasoning that § 271(a) “clearly suggests the
conception that the ‘tort’ of patent infringement occurs where the offending act is committed and
not where the injury is felt,” the Court “h[eld] that to sell an infringing article to a buyer in
Illinois is to commit a tort there (though not necessarily only there).” Id.
However, because the Supreme Court has recently clarified where intentional tortfeasors
can be subject to personal jurisdiction, the Court must analyze whether the Federal Circuit rule
for patent infringement requires reconsideration. In Walden v. Fiore, ––– U.S. ––––, 134 S. Ct.
1115 (2014), the Court held that a Nevada court could not exercise personal jurisdiction over a
Georgia police officer merely on the basis that he knew his allegedly tortious conduct in Georgia
would delay the return of funds to plaintiffs with connections to Nevada. For intentional torts,
the Court explained, “it is . . . insufficient [for minimum contacts] to rely on a defendant’s
‘random, fortuitous, or attenuated contacts’ or on the ‘unilateral activity’ of a plaintiff.” Walden,
134 S. Ct. at 1123 (citing Burger King Corp. v. Rudzewicz, 471 U.S. 462, 475 (1985)). In
reversing the Ninth Circuit’s ruling, the Court noted that “no part of [defendant’s] course of
conduct occurred in Nevada . . . [he] never traveled to, conducted activities within, contacted
anyone in, or sent anything or anyone to Nevada.” Id. at 1124 (emphasis added). In short, the
Court held that “[a] forum State's exercise of jurisdiction over an out-of-state intentional
tortfeasor must be based on intentional conduct by the defendant that creates the necessary
contacts with the forum.” Id. at 1123.
The Federal Circuit has not directly addressed a personal jurisdiction issue since the
Supreme Court’s decision in Walden. That decision, however, does not appear to affect the rule
announced in Beverly Hills Fan and North American Philips: defendants in patent-infringement

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cases are subject to jurisdiction wherever they sell allegedly infringing products. In Walden, the
Court held that jurisdiction over a tortfeasor must be based on the defendant’s “intentional
conduct” directed toward the forum, not “random, fortuitous, or attenuated contacts” or the
“unilateral activity” of the plaintiff (such as the Walden plaintiffs, who suffered a tort in Georgia
and then traveled back to Nevada). When applying that rule, the Court found that the defendant
did not direct “intentional conduct” toward the forum, such as “sen[ding] anything or anyone to
[the forum].” That rule is consistent with the Federal Circuit rule for alleged patent infringers:
“to sell an infringing article to a buyer in [the forum] is to commit a tort there (though not
necessarily only there).” See North Am. Philips Corp., 35 F.3d at 1579.
Furthermore, the district courts that have recently addressed motions to dismiss for lack
of personal jurisdiction in patent-infringement cases have cited Walden and continued to apply
the Federal Circuit place-of-sale rule. See, e.g., Presby Patent Trust v. Infiltrator Sys., Inc., 2015
WL 3506517, at *2 (D.N.H. June 3, 2015) (citing Walden and granting defendant’s motion to
dismiss, in part, because “[defendant] neither marketed nor sold the accused [product] in New
Hampshire”); Skyworks Sols., Inc. v. Kinetic Techs. HK Ltd., 2015 WL 461920, at *4-5 (D.
Mass. Feb. 4, 2015) (citing Walden and granting motion to dismiss because “[plaintiff] [ ] failed
to establish a prima facie showing under the Federal Circuit’s test because there is nothing in the
record to indicate that [defendant] itself has undertaken any action purposefully to establish
business contacts with Massachusetts”).
Accordingly, there is no reason why the Federal Circuit rule––that an alleged patent
infringer is subject to personal jurisdiction anywhere it sells its allegedly infringing product––
would not apply here. Taking PetEdge’s allegations as true, Fortress offered the allegedly
infringing product for sale in Massachusetts, at least two Massachusetts residents purchased the

10

product, and PetEdge suffered “economic loss” in Massachusetts because it “los[t] business”
here. See Beverly Hills Fan, 21 F.3d at 1571. In short, this case presents facts far different from
those in Walden, where “no part of [defendant’s] course of conduct occurred in [the forum].” Id.
at 1124. 3 Therefore, Fortress is subject to personal jurisdiction in Massachusetts.
Fortress further contends that the unilateral actions of PetEdge’s employees—that is, their
purchases of the allegedly infringing products on Amazon.com—are not sufficient minimum
contacts to support a finding of personal jurisdiction. In its reply memorandum, Fortress cites a
line of cases in support of its argument that a plaintiff cannot rely solely on its own manipulative
purchases to create jurisdiction. See, e.g., Buccellati Holding Italia SPA v. Laura Buccellati,
LLC, 935 F. Supp. 2d 615, 623 (S.D.N.Y. 2013) (declining to assert personal jurisdiction over
defendants in a trademark infringement action when it was “obvious that plaintiffs made this
purchase . . . in order to bolster their argument that this Court has personal jurisdiction over
defendants”); Edberg v. Neogen Corp., 17 F. Supp. 2d 104, 112 (D. Conn. 1998) (declining to
treat a purchase made by a plaintiff in the forum state as a qualifying contact for personal
jurisdiction, and noting that “it was . . . the acts of [plaintiff] that brought the infringing product

3

In a footnote, the Walden court explicitly stated that its holding did not address cases involving intentional
torts committed by use of the Internet:
Respondents warn that if we decide petitioner lacks minimum contacts in this case, it will
bring about unfairness in cases where intentional torts are committed via the Internet or
other electronic means (e.g., fraudulent access of financial accounts or “phishing”
schemes). As an initial matter, we reiterate that the “minimum contacts” inquiry
principally protects the liberty of the nonresident defendant, not the interests of the
plaintiff. World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286, 291-292 (1980). In
any event, this case does not present the very different questions whether and how a
defendant's virtual “presence” and conduct translate into “contacts” with a particular
State. To the contrary, there is no question where the conduct giving rise to this litigation
took place: Petitioner seized physical cash from respondents in the Atlanta airport, and
he later drafted and forwarded an affidavit in Georgia. We leave questions about virtual
contacts for another day.
134 S. Ct. at 1125 n.9.

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into the forum”).
But Fortress misconstrues the nature of its own activities in Massachusetts by comparing
them with the actions of the defendants in the “manipulative purchase” line of cases. In
Buccellati and Edberg, the defendants sold their products only on their own websites; they did
not place their products into the national stream of commerce through online retailers. Further,
the Buccellati and Edberg plaintiffs initiated the defendants’ contacts with the forum by seeking
out their websites, and in one case even used a third-party buyer to conceal the true location of
the purchaser. See Buccellati, 935 F. Supp. 2d at 620 (“Jurisdictional discovery also revealed
that Defendants’ website . . . has made only one sale in [the forum] . . . to Plaintiffs’ New Yorkbased private investigator . . . .”); see also Edberg, 17 F. Supp. 2d at 107 (noting that the
defendant’s contact with the forum was not caused by its “promotion, advertising, or sales
activities,” but by the plaintiff hiring a third party to purchase the defendant’s product).
Here, Fortress was not a company that exercised control over its sales by limiting its
marketing and advertising to its own website. Rather, it made an affirmative decision to place its
product into the national stream of commerce and itself initiated contact with the Commonwealth
by selling its product through national online retailers like Amazon.com. This is not a case
where PetEdge travelled out of state to purchase the allegedly infringing product, unilaterally
took the product back into Massachusetts, and is now claiming that it is feeling the “effects” of
infringement in Massachusetts. See Walden, 134 S. Ct. at 1125.
There is ample evidence of Fortress’s “intentional conduct” directed toward
Massachusetts before the PetEdge employees even purchased the product. See id. at 1123.
Viewing the evidence in the light most favorable to PetEdge, Fortress advertised through
national online retailers, and knowing that those retailers often sold products to Massachusetts

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consumers. By advertising to Massachusetts residents, Fortress necessarily “offer[ed] to sell” its
allegedly infringing product in Massachusetts. See 35 U.S.C. § 271(a). Finally, when Fortress
received orders from Massachusetts residents, it did not refuse to fulfill them, or otherwise
attempt to avoid doing business in the state. Rather, taking PetEdge’s allegations as true,
Fortress purposefully transacted with two Massachusetts residents, and shipped its allegedly
infringing product into the Commonwealth. Fortress’s conduct directed toward the
Commonwealth is more substantial than the forum contacts of the defendants in Buccellati and
Edberg, and it is sufficient to support a finding of jurisdiction under Walden and Beverly Hills
Fan. The fact that PetEdge is using its employees’ purchases of the product to support its
broader allegations of Fortress’s infringing Massachusetts sales makes little difference,
especially because PetEdge has not had the benefit of jurisdictional discovery and need only
make a prima facie showing of facts in support of jurisdiction.
Moreover, a case that Fortress does not cite, Otter Products, LLC v. Seal Shield, LLC,
2014 WL 1213475 (D. Colo. Mar. 24, 2014), is more instructive, and highlights the crucial
differences between this case and the “manipulative purchase” line of cases. In Otter Products,
the plaintiff sued two defendants, Seal and Klear, for infringing on its patents for cell-phone
cases. Id. at *1. The court found that there were sufficient facts to exercise personal jurisdiction
over defendant Seal, but not defendant Klear. Id. at *8. In exercising jurisdiction over Seal, the
court noted that “Seal ha[d] made direct sales to [the forum], as well as placed its products into
the ‘stream of commerce’ via national retailers and distributors with the clear understanding that
its products will find their way to [the forum].” Id. at *3. In contrast, the court did not exercise
jurisdiction over Klear because it made sales only through its own website, and because there
was “no evidence that Klear s[old] products through national distributors or that Klear advertised

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its products through channels that would be expected to reach Colorado residents.” Id. Here,
Fortress’s advertising and sales through Amazon.com are more analogous to the activities of Seal
than Klear.
Furthermore, and in any event, Fortress’s argument overstates the importance of its two
Massachusetts sales to the minimum-contacts inquiry in a patent-infringement case. Federal
Circuit law remains unclear whether an alleged infringer even needs to sell a product in the
forum to confer jurisdiction; mere offers for sale may be sufficient. In 1996, after the Federal
Circuit ruled in Beverly Hills Fan and North American Philips, Congress amended 35 U.S.C.
§ 271(a) such that “offers to sell” infringing products triggered liability for patent infringement.
See Uruguay Round Agreement Act, Pub. L. No. 103-465, § 533(a), 108 Stat. 4809 (effective
Jan. 1, 1996). The Federal Circuit has held in some cases that a finding of jurisdiction and
liability does not even require a formal offer in the sense of contract law, much less a sale, and
instead can be met by advertising activity that is sufficiently definite in terms of price and
content. See, e.g., HollyAnne Corp. v. TFT, Inc., 199 F.3d 1304, 1308 (Fed. Cir. 1999) (“In its
first attempt to define the contours of an ‘offer to sell,’ this court held that there had been an
‘offer to sell’ where the defendant manufacturer had communicated to prospective buyers both a
description of the product and ‘a price at which it can be purchased.’” (quoting 3D Sys., Inc. v.
Aarotech Laboratories, Inc., 160 F.3d 1373, 1379 (Fed. Cir. 1998)).
In 3D Systems, the Federal Circuit ruled that price quotation letters, sent by an alleged
infringer to California residents, constituted offers to sell under § 271(a), and on that basis, held
that the defendant was subject to personal jurisdiction in California even though it never made a
single sale in California. See 160 F.3d at 1378-81 (“One of the purposes of adding ‘offer[ ] to
sell’ to § 271(a) was to prevent exactly the type of activity [defendant] has engaged in, i.e.,

14

generating interest in a potential infringing product to the commercial detriment of the rightful
patentee.”). Here, and unlike the defendant in 3D Systems, Fortress both advertised its allegedly
infringing product to Massachusetts residents and sold its product in the forum. Furthermore,
Fortress’s advertisements through online retailers surely communicated to prospective
Massachusetts buyers both a description of the product and a price at which it could be
purchased. Whenever Massachusetts Internet shoppers searched for “Pet Studio ramp steps” on
Amazon.com, Fortress’s allegedly infringing product appeared alongside––and at a lower price
than––PetEdge’s patented product. (See Katz Decl. Ex. 1).
Therefore, viewing the record in the light most favorable to PetEdge, Fortress
purposefully directed its actions––that is, both offers and even actual sales of its allegedly
infringing product––as residents of the Commonwealth. Accordingly, those purposeful contacts
are sufficient minimum contacts for this Court to exercise personal jurisdiction over Fortress.
2.

Relatedness

The second prong of the Federal Circuit’s test for personal jurisdiction deals not with the
quantum of the defendant’s contacts with the forum state, but rather with the content of those
contacts. Where, as here, the defendant’s contacts with the forum state are not systematic and
pervasive, due process dictates that jurisdiction can only be exercised over a defendant if its
contacts with the forum state form the basis for or relate to the specific claims at issue. Inamed,
249 F.3d at 1360.
Patent infringement occurs when someone “without authority makes, uses, offers to sell
or sells any patented invention.” 35 U.S.C. § 271(a). Thus, a patent-infringement case arises out
of any such activities alleged to be carried out by the defendant in the complaint. See 3D
Systems, 160 F.3d at 1378. All of Fortress’s contacts with the Commonwealth alleged in the

15

complaint involve either selling or offering to sell its allegedly infringing product in
Massachusetts.
Accordingly, the Court finds that Fortress’s contacts with Massachusetts are all related to
the patent-infringement claims before it, and therefore the Court may exercise personal
jurisdiction over Fortress.
3.

Reasonableness and Fairness

Even if the requisite contacts with the forum exist, the court’s exercise of jurisdiction
must comport with traditional notions of “fair play and substantial justice.” International Shoe,
326 U.S. at 320. For example, “[a] clash between the fundamental social policies of a forum
state and another state related to the action could constitutionally trump jurisdiction.” 3D
Systems, 160 F.3d at 1380. The third and final prong of the Federal Circuit’s test for personal
jurisdiction is intended to determine if such a situation exists in a particular case.
However, the Federal Circuit has maintained a restrictive characterization of the third
prong, remarking that “such defeats of otherwise constitutional personal jurisdiction ‘are limited
to the rare situation in which the plaintiff’s interest and the state’s 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.’” Akro, 45 F.3d at 1549 (quoting Beverly
Hills Fan, 21 F.3d at 1568).
The five “gestalt” factors articulated by the Supreme Court for determining whether the
exercise of personal jurisdiction would be fair and reasonable are (1) the defendant’s burden of
appearing; (2) the forum state’s interest in adjudicating the dispute; (3) the plaintiff’s interest in
obtaining convenient and effective relief; (4) the judicial system’s interest in obtaining the most

16

effective resolution of the controversy; and (5) the common interests of all sovereigns in
promoting substantive social policies. See Burger King, 471 U.S. at 477.
Fortress contends that requiring it to defend the claims in this forum would violate its due
process rights, but does not specifically address any of the five “gestalt” factors. The patent law
of the United States, as established by the Supreme Court and the Federal Circuit, will apply to
the claims at issue no matter where they are litigated, and Fortress has not suggested a forum that
would be more convenient. Therefore, the Court finds no arguments sufficiently compelling to
stop it from exercising otherwise constitutional personal jurisdiction over Fortress.
B.

PetEdge’s Other Claims

The complaint also alleges claims for trademark infringement and unfair competition
under the Lanham Act and multiple state laws. Because the Court finds that it has specific
personal jurisdiction over Fortress as to PetEdge’s patent-infringement claim, it need not address
the parties’ arguments regarding the other claims. See, e.g., Home Owners Funding Corp. of Am.
v. Century Bank, 695 F. Supp. 1343, 1345 (D. Mass. 1988) (“In a multi-count complaint, if a
court has personal jurisdiction over the defendant with respect to one count, it has personal
jurisdiction with respect to all counts.”); Amtrol, Inc. v. Vent-Rite Valve Corp., 646 F. Supp.
1168, 1175 (D. Mass. 1986) (holding that a court may exercise pendant personal jurisdiction
over a foreign defendant with respect to state law claims that arise out of a nucleus of operative
facts common to a federal antitrust claim).
C.

PetEdge’s Motion to Strike

Because the Court finds that it has personal jurisdiction over Fortress, it need not address
PetEdge’s motion to strike the Hofeditz declaration under Local Rules 7.1(b)(1) and 7.1(a)(2).

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IV.

Conclusion
For the foregoing reasons, the Court finds that it has specific personal jurisdiction over

Fortress, and the defendant’s motion to dismiss for lack of personal jurisdiction is therefore
DENIED.
So Ordered.

/s/ F. Dennis Saylor
F. Dennis Saylor IV
United States District Judge

Dated: November 17, 2015

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