Zen Industries, Inc. v. Hoffman Manufacturing Inc.

Filing 23

Memorandum of Opinion and Order: The Court finds that personal jurisdiction over defendant is lacking. Accordingly, this matter is hereby transferred to the Eastern District of Washington. Judge Patricia A. Gaughan on 2/9/17. (LC,S) re 14

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF OHIO
EASTERN DIVISION

Zen Industries, Inc.,
Plaintiff,
Vs.
Hoffman Manufacturing, Inc.,
Defendant.

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CASE NO. 1:16 CV 2352
JUDGE PATRICIA A. GAUGHAN

Memorandum of Opinion and Order

INTRODUCTION
This matter is before the Court upon Defendant’s Motion to Dismiss (Doc. 14). This is a
patent infringement case. For the reasons that follow, the Court finds that personal jurisdiction is
lacking. In the interests of justice, this matter is transferred to the Eastern District of
Washington.
FACTS
Plaintiff, Zen Industries, Inc. d/b/a American Mine Door Co., filed this lawsuit against
defendant Hoffman Manufacturing, Inc. Plaintiff is the owner of United States Patent Nos.
8,884,760 (’760 Patent) and 9,181,802 (’802 Patent). These patents cover inventions related to

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high-pressure underground mine ventilation doors. Plaintiff claims that defendant sells products
that infringe these patents. The complaint contains five claims for relief. Counts one and two
allege infringement of the ’760 Patent and the ’802 Patent, respectively. Count three alleges a
violation of the Ohio Deceptive Trade Practices Act. Count four is a claim for common law
unfair competition. Pursuant to count five, plaintiff indicates that it intends to amend the
complaint to add a claim for infringement of a patent that has yet to issue.
Defendant moves to dismiss for lack of personal jurisdiction and improper venue. In the
alternative, defendant asks that the Court transfer venue to the Eastern District of Washington.
Plaintiff opposes the motion.
STANDARD OF REVIEW
Plaintiff has the burden of showing that personal jurisdiction exists. CompuServe, Inc. v.
Patterson, 89 F.3d 1257, 1262 (6th Cir.1996). Plaintiff need only make a prima facie showing of
jurisdiction, and the Court considers the pleadings and affidavits in a light most favorable to her.
Id. In resolving the Rule 12(b)(2) motion solely on the written submissions and affidavits rather
than holding an evidentiary hearing, the district court does not weigh the controverting assertions
of the party seeking dismissal. Chrysler Group LLC v. South Holland Dodge, Inc., 2011 WL
1790333 (E.D. Mich. May 10, 2011) (citing Am. Greetings Corp. v. Cohn, 839 F.2d 1164, 1169
(6th Cir.1988). Federal Circuit law is in accord. See, e.g., Electronics for Imaging, Inc. v. Coyle,
340 F.3d 1344, 1349 (Fed. Cir. 2003)(“a district court must accept the uncontroverted allegations
in the plaintiff's complaint as true and resolve any factual conflicts in the affidavits in the

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plaintiff's favor.”)1
ANALYSIS
1. Patent infringement claims
Under Federal Circuit law, the determination of whether personal jurisdiction exists over
an out-of-state defendant involves two inquiries: (1) whether a forum state’s long-arm statute
permits service of process; and (2) whether the assertion of personal jurisdiction would violate
due process. Inamed Corp. v. Kuzmak, 249 F.3d 1356, 1359 (Fed. Cir. 2001). See also Genetic
Implant Sys., Inc. v. Core-Vent Corp., 123 F.3d 1455, 1458 (Fed. Cir. 1997).

With regard to the due process prong, the Federal Circuit:
has adopted a three-factor test embodying the Supreme Court's jurisprudence on specific
personal jurisdiction. To determine whether jurisdiction over an out-of-state defendant
comports with due process, we look to whether (1) the defendant purposefully directed its
activities at residents of the forum state, (2) the claim arises out of or relates to the
defendant's activities with the forum state, and (3) assertion of personal jurisdiction is
reasonable and fair. The first two factors correspond to the “minimum contacts” prong of
the International Shoe analysis, and the third factor with the “fair play and substantial
justice” prong. While the plaintiff bears the burden to establish minimum contacts, upon
this showing, defendants must prove that the exercise of jurisdiction is unreasonable.
Coyle, 340 F.3d at 1350 (citations omitted).2

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The Court applies Federal Circuit law in ascertaining whether
personal jurisdiction exists over the patent claims asserted by
plaintiff and Sixth Circuit law to the remaining claims. See, Coyle,
340 F.3d at 1348.

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The parties do not differentiate between specific and general
personal jurisdiction. It does not appear that plaintiff is claiming
that defendant maintains systematic and continuous contacts with
the State of Ohio such that general jurisdiction exists. Regardless,
the Court finds that the materials before the Court fall far short of
establishing general personal jurisdiction for both the patent
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Upon review, the Court finds that personal jurisdiction over defendant is lacking. With
regard to the first two factors, i.e. those that comprise the “minimum contacts” test, the Court
finds that plaintiff fails to establish that defendant maintains minimum contacts sufficient to
confer specific personal jurisdiction.
The only fact plaintiff that points to in support of personal jurisdiction is the website
operated by defendant.3 Therefore, the Court will address whether defendant’s website is
sufficient to show that defendant “purposefully directed its activities at residents” of Ohio and
that plaintiff’s claim “arises out of or relates to defendant's activities with the forum state.”
Plaintiff argues that the website is “sufficiently interactive” to confer jurisdiction.
According to plaintiff, although purchasers cannot place orders online, it does not follow that the
website is not interactive. This is so because the nature of the product, i.e., large mine
ventilation doors that require measurements and installation, does not lend itself to online

infringement and state law claims. See, See, Inc. v. Imago
Eyewear Pty. Ltd., 167 Fed. Appx. 518 (6th Cir. 2006);Campbell
Pet Co. v. Miale Eyeglasses, 542 F.3d 879 (2008). Accordingly,
the Court’s analysis is directed at specific personal jurisdiction.
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The Court notes that plaintiff’s complaint contains certain
allegations directed at “jurisdiction and venue.” By way of
example, plaintiff alleges “upon information and belief” that “via
the internet or otherwise” defendant “regularly [does or solicits]
business in Ohio, maintain[s] continuous and systematic contacts
in Ohio, and/or deriv[es] substantial revenue from goods and/or
services provided to individuals in Ohio.” (Compl. ¶ 10).
Although the Court is not convinced that these allegations are
factual in nature–as opposed to bare legal conclusions–, the Court
notes that plaintiff does not rely on these allegations in opposing
defendant’s motion to dismiss. Rather, plaintiff relies only on the
existence of defendant’s website in support of its position that
personal jurisdiction exists.
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purchasing. According to plaintiff, the website encourages prospective purchasers to contact
defendant for price quotes or other inquiries. Plaintiff notes that the website provides, “[W]e can
be reached by phone, email, or in person. Contact us today.” Plaintiff argues that the website
essentially serves as a nationwide advertisement of defendant’s products and services, including
customers located in Ohio.
In response, defendant argues that its website is not interactive and, as such, the website
standing alone is insufficient to confer personal jurisdiction in Ohio. Defendant relies, in part,
on an affidavit from Justin Hoffman, its president, who avers that the website does not accept
sales.
Upon review, the Court finds that the website is not sufficient to confer personal
jurisdiction over defendant. In opposition to defendant’s motion to dismiss, plaintiff attaches a
copy of the “contact” page on defendant’s website. That page provides phone, fax, and email
contact information for defendant’s employees. Nowhere does plaintiff provide the Court with
any indication (or even argue) that an individual in Ohio could place an order on the website.
Moreover, plaintiff does not appear to dispute this fact and indeed argues that, given the nature
of the products at issue, it is not unusual that orders cannot be placed online. Notably, plaintiff
does not argue that defendant actually sold any product to an Ohio resident as a result of the
website. As such, the Court finds that defendant’s website is not sufficient to make a prima facie
showing that defendant “purposefully directed its activities at residents” of Ohio. Nor does
plaintiff make a prima facie showing that the claim “arises out of or relates to the defendant's
activities with the forum state.” In patent cases, the situs of the injury is the location at which a
sale is made or the patentee loses business. See, North American Philips, 35 F.3d 1576, 1578-79

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(Fed. Cir. 1994). Thus, even assuming arguendo that the website is sufficient to show that
defendant “purposefully directed its activities at Ohio residents,” plaintiff fails to make a prima
facie showing that the patent infringement claims arise out of those contacts. As such, the Court
finds that specific personal jurisdiction does not exist over defendant with respect to the patent
infringement claims. See also, Canplas Indust., Ltd. V. InerVac Design Corp., 2013 WL
6211989 (N.D. Ohio Nov. 22, 2013).
Plaintiff relies on two cases from the District of Massachusetts in support of its claim that
a website such as the one operated by defendant is sufficient to confer personal jurisdiction.
Morphotrust USA, LLC v. Indentrix, LLC, 2016 WL 3512131 (D. Mass. June 21, 2016); Edvisors
Network, Inc. V. Education Advisors, Inc., 755 F.Supp. 2d 272 (D. Mass. 2010). As an initial
matter, the Court notes that it is not bound by those decisions and declines to follow the
reasoning contained therein. Regardless, the decisions are distinguishable in that both cases
involved trademark as opposed to patent infringement, and both websites contained additional
features not present here. See, Morphotrust, at * 6 (“second, and more significantly, defendants’
websites offer visitors a free live demonstration of defendants’ [] product”); Edvisors, 755
F.Supp.2d at 282 (website invites users to request a free consultation by submitting information
about themselves and to describe any issues they wish to discuss).
Because the Court finds that an exercise of personal jurisdiction over defendant with
respect to plaintiff’s patent infringement claims does not comport with due process, the Court
need not address whether Ohio’s long-arm statute would permit service of process on defendant.
2. State law claims
For the same reasons set forth above, the Court finds that specific personal jurisdiction

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over the state law claims is lacking as an exercise of personal jurisdiction does not satisfy due
process. The Sixth Circuit addressed a case with nearly the same facts in See, Inc. V. Imago
Eyewear Pty., Ltd., 167 Fed. Appx. 518 (2006). In that case, the defendant’s website did not
allow users to make purchases, but allowed users to view the products. It did, however, contain
a form with dialogue boxes that permitted users to contact the defendant and send personal
information through the website. The court affirmed the district court’s determination that,
standing alone, such contacts “would offend due process.” Accordingly, based on See, the Court
finds that personal jurisdiction over the state law claims is lacking.
CONCLUSION
For the foregoing reasons, the Court finds that personal jurisdiction over defendant is
lacking. Accordingly, this matter is hereby transferred to the Eastern District of Washington.
IT IS SO ORDERED.

/s/ Patricia A. Gaughan
PATRICIA A. GAUGHAN
United States District Judge
Dated: 2/9/17

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