Basimah Khulusi M.D., LLC v. Honeywell International Inc.
Filing
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ORDER granting 12 motion to dismiss case for lack of personal jurisdiction. Signed on 1/25/19 by District Judge Greg Kays. (Law clerk)
IN THE UNITED STATES DISTRICT COURT FOR THE
WESTERN DISTRICT OF MISSOURI
WESTERN DIVISION
BASIMAH KHULUSI M.D., LLC,
Plaintiff,
v.
HONEYWELL INTERNATIONAL, INC.,
Defendant.
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No. 4:18-CV-00425-DGK
ORDER GRANTING DEFENDANT’S MOTION TO DISMISS
Plaintiff Basimah Khulusi, M.D., Inc., alleges Defendant Honeywell International, Inc.,
(“Honeywell International”) infringed on its patent for workplace safety goggles by making and
selling a similar product. Now before the Court is Defendant’s Motion to Dismiss or, in the
alternative, Transfer (Doc. 12).1 Because Plaintiff has failed to make a prima facie showing that
Honeywell International purposefully availed itself to the forum, the motion to dismiss is
GRANTED.
Background
Plaintiff is a Missouri company that patented safety goggles worn over eyeglasses, which
Dr. Basimah Khulusi, a medical doctor, invented. Honeywell International is a parent company
to organizations that make and sell a variety of consumer and commercial products. One such
subsidiary is Honeywell Safety Products, USA, Inc., (“Honeywell Safety”) which, among other
things, designs and sells eye protection products.
In December 2015, Plaintiff’s counsel sent a licensing letter to Honeywell International
and Honeywell Safety, offering to license Plaintiff’s patent for UVEX goggles, which are sold on
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Because the issues presented are clear, the Court finds that oral argument is unnecessary and DENIES Honeywell
International’s request for oral argument.
Honeywell Safety’s website (Doc. 17-3).
Matthew Smyth, an assistant general counsel of
intellectual property at Honeywell International, replied that he represented Honeywell Safety and
that the company refused to accept a licensing arrangement with Plaintiff (Doc. 18-1). Plaintiff
then filed this patent-infringement claim against Honeywell International on June 1, 2018 (Doc.
1). In response, Honeywell International filed this motion to dismiss or, in the alternative, transfer,
arguing this Court does not have personal jurisdiction over Honeywell International, Plaintiff has
failed to state a claim, and, at the least, the case should be transferred to Delaware.
Discussion
The Court addresses only Honeywell International’s argument that this Court does not have
personal jurisdiction over it because that issue is dispositive of this motion.
I.
This Court does not have personal jurisdiction over Honeywell International.
The exercise of personal jurisdiction must comport with the forum’s long-arm statute and
with due process. Graphic Controls Corp. v. Utah Med. Prods., Inc., 149 F.3d 1382, 1385 (Fed.
Cir. 1998).2
Since Missouri’s long-arm statute authorizes the exercise of jurisdiction over
non-residents to the extent permitted by the due process clause, Mo. Rev. Stat. § 506.500 (2016),
the jurisdictional analysis collapses into a single inquiry, AFTG-TG, LLC v. Nuvoton Tech. Corp.,
689 F.3d 1358, 1360 (Fed. Cir. 2012).
Due process requires a defendant to have “certain minimum contacts with [the forum] such
that the maintenance of the suit does not offend ‘traditional notions of fair play and substantial
justice.’” Int’l Shoe Co. v. Washington, 326 U.S. 310, 316 (1945) (quoting Milliken v. Meyer, 311
U.S. 457, 463 (1940)). The “minimum contacts” necessary may be specific or general, but
2
Because this is a patent-infringement action, the Court looks to Federal Circuit law to determine whether it has
personal jurisdiction over Honeywell International. Nuance Commc’ns, Inc. v. Abbyy Software House, 626 F.3d 1222,
1230 (Fed. Cir. 2010).
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regardless of which is asserted, the primary focus is the defendant’s relationship to the forum.
Bristol-Myers Squibb Co. v. Superior Court of Cal., San Francisco Cty., 137 S. Ct. 1773, 1779
(2017).
A. The Court does not have general jurisdiction over Honeywell International.
Plaintiff first avers the Court has general jurisdiction over Honeywell International (Doc.
17 at 18). But neither of the paradigm bases for general jurisdiction exist since Honeywell
International is a Delaware corporation with its principal place of business in New Jersey. See
Daimler AG v. Bauman, 571 U.S. 117, 137 (2014) (holding the place of incorporation and principal
place of business are paradigm bases for general jurisdiction). And Honeywell International
certainly cannot be said to have contacts so continuous and systematic as to render it essentially at
home in Missouri. See id. (holding that the presence of multiple offices, the direct distribution of
thousands of products accounting for billions of dollars in sales, and the continuous interactions
with customers in the forum are not enough to support the exercise of general jurisdiction). The
Court does not have general jurisdiction over Honeywell International.
B. The Court does not have specific jurisdiction over Honeywell International.
A closer call is whether this Court has specific jurisdiction. The Federal Circuit has
outlined a three-pronged test for determining whether specific jurisdiction exists: “(1) whether the
defendant purposefully directs activities at 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.”
AFTG-TG, 689 F.3d at 1361. Once the plaintiff has made a prima facie showing that the first two
elements of the due process requirement are met, the burden shifts to the defendant to prove
jurisdiction is unreasonable. Celgard, LLC v. SK Innovation Co., 792 F.3d 1373, 1378 (Fed. Cir.
2015) (citation omitted). “[A] district court must accept the uncontroverted allegations in the
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plaintiff’s complaint as true and resolve any factual conflicts in the affidavits in the plaintiff’s
favor.” M-I Drilling Fluids UK Ltd. v. Dynamic Air Ltda., 890 F.3d 995, 999 (Fed. Cir. 2018)
(internal citations and quotations omitted) (emphasis added).
Plaintiff claims the Court has specific jurisdiction over Honeywell International because
Honeywell International “sold its infringing products in this State and this district,” “advertises the
infringing products in this State and district, and promotes licensed retailers in this State and
district” (Doc. 1 at ¶¶ 7, 8).
More specifically, Plaintiff alleges that Honeywell International
purposefully directed its activities at Missouri by selling UVEX goggles to various resellers
located in the Kansas City, Missouri, area (Doc. 17 at 16). Honeywell International contends
Plaintiff cannot make a prima facie showing that personal jurisdiction exists because Honeywell
International does not advertise, make, or sell UVEX goggles at all, much less in Missouri. In
support, Honeywell International supplies an affidavit from Daniel Birch, the Global Category
Leader for UVEX goggles, which states that Honeywell Safety—not Honeywell International—
designs, markets, offers to sell, and sells the safety goggles (Doc. 13-1).
In an attempt to refute Honeywell International and make a prima facie showing that
personal jurisdiction exists, Plaintiff first submits an exhibit of the UVEX website, which is linked
to Honeywell Safety’s website (Doc. 17-1). But this exhibit provides no proof that Honeywell
International in fact advertises and sells UVEX goggles. Even if it did, the advertisement of UVEX
goggles on a consumer website is not enough to show purposeful availment to each state in which
Honeywell International would, but has not yet, provided or even offered a sale. The existence of
a consumer website, without more, is insufficient to show that Honeywell International has
minimum contacts with Missouri. See NexLearn, LLC v. Allen Interactions, Inc., 859 F.3d 1371,
1379 (Fed. Cir. 2017) (“Something more [than an interactive website] is needed—whether it be
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actual sales, targeted advertising, or contractual relationships—to connect the defendant’s
infringing acts of making, using, offering, or selling its product with the forum State.”); see also
Trintec Indus., Inc. v. Pedre Promotional Prod., Inc., 395 F.3d 1275, 1281 (Fed. Cir. 2005)
(finding that absent evidence the defendant’s website is directed at the forum or that forum
residents have ever used the website to transact business, there is no personal jurisdiction over the
defendant).
Recognizing the UVEX website is not enough to establish specific jurisdiction, Plaintiff
also attaches an exhibit of a webpage titled, “Where to Buy Honeywell Safety Products” on
Honeywell Safety’s website (Doc. 1-2). The page displays a map, which allows prospective
customers to “[f]ind an authorized distributor of Honeywell Safety Products by using your current
location or typing in your desired zip code or city in the tool below.” It then shows a number of
retailers in the Kansas City, Missouri, area. While this exhibit shows Honeywell Safety distributed
UVEX goggles to retailers in Missouri, it does not show Honeywell International conducted any
business, much less made sales of infringing articles, here. “[I]t is well-settled law that, absent a
piercing of the corporate veil (which neither party alleges), a parent company is not liable for the
acts of its subsidiary.” Dow Jones & Co. v. Ablaise Ltd., 606 F.3d 1338, 1349 (Fed. Cir. 2010).
This is insufficient to prove Honeywell International had minimum contacts with Missouri.3
Finally, Plaintiff asserts that Honeywell International has purposefully directed its
activities at Missouri because it manages the Kansas City National Security Campus in Kansas
City, Missouri. But even if Honeywell International manages the campus—a fact Honeywell
International disputes—those contacts do not arise out of or relate to the alleged infringing conduct
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Plaintiff summarily claims these webpages show that Honeywell International purposefully availed itself to the forum
because Honeywell International has a copyright on both websites. But a website copyright has no bearing on the
jurisdictional question here; it simply shows ownership over the website design and its content, not the products sold.
17 U.S.C. § 102.
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in this case. Indeed, Plaintiff does not claim that the goggles are advertised, made, or sold at this
facility.
Plaintiff submits no other evidence tending to show that Honeywell International
purposefully directed activities at the forum by making sales of UVEX goggles in Missouri.
On this record, any alleged infringing conduct that occurred in Missouri points back to
Honeywell Safety, not Honeywell International. Plaintiff has failed to meet its prima facie burden
of showing Honeywell International purposefully directed any activities resulting in this claim at
the forum. Hence, the Court does not have personal jurisdiction over Honeywell International.
Conclusion
Honeywell International’s motion to dismiss is GRANTED. Plaintiff’s claim against
Honeywell International is dismissed for lack of personal jurisdiction.
IT IS SO ORDERED.
Date: January 25, 2019
/s/ Greg Kays
GREG KAYS, JUDGE
UNITED STATES DISTRICT COURT
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