Aerodyne Environmental, Inc. v. Keirton, Inc. et al

Filing 102

Opinion and Order: The Court GRANTS Defendant SIDMAC's motion to dismiss for lack of personal jurisdiction (ECF No. 84 ; ECF No. 87 ). Judge J. Philip Calabrese on 9/15/2022.(Y,A)

Case: 1:22-cv-00118-JPC Doc #: 102 Filed: 09/15/22 1 of 18. PageID #: 1891

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF OHIO
EASTERN DIVISION
AERODYNE ENVIRONMENTAL,
INC.,
Plaintiff,
v.
KEIRTON, INC., et al.,
Defendants.

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Case No. 1:22-cv-0118
Judge J. Philip Calabrese
Magistrate Judge
Jonathan D. Greenberg

OPINION AND ORDER
In April 2022, Plaintiff Aerodyne Environmental, Inc., amended its complaint
and added SIDMAC Engineering & Manufacturing, Inc. as a defendant.

(ECF

No. 60.) Plaintiff alleges that SIDMAC misappropriated its trade secrets by reverseengineering Plaintiff’s proprietary horizontal cyclones and manufacturing the alleged
copy-cat cyclone for Defendant Keirton, Inc. Defendant SIDMAC moves to dismiss
the claims against it for lack of personal jurisdiction. (ECF No. 84 (redacted); ECF
No. 87 (sealed).) For the reasons that follow, the Court GRANTS the motion to
dismiss.
STATEMENT OF FACTS
Taking the facts alleged in the amended complaint as well as the parties’
declarations as true and construing them in Plaintiff’s favor, as the Court must in the
present procedural posture, Plaintiff bases its claims against SIDMAC on the
following facts relevant to the question of personal jurisdiction.

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A.

Aerodyne’s Cyclone Design for Keirton

This dispute arises from a business relationship between Aerodyne and
Keirton. Beginning in 2018, Aerodyne designed and manufactured a horizontal
cyclone dust collector for Keirton to integrate into its cannabis and hemp trimmers.
(ECF No. 60, ¶¶ 25–67, PageID #1016–26.) Aerodyne and Keirton collaborated to
design the cyclone, and Aerodyne shared allegedly proprietary designs with Keirton.
(Id., ¶¶ 32–38, PageID #1018–20.) After a trial period, Keirton ordered six cyclones
from Aerodyne. (Id., ¶ 43, PageID #2021.) Also, the parties entered into several nondisclosure agreements over the course of their relationship.

(Id., ¶¶ 33–36,

PageID #1018–19; ¶ 98, PageID #1031.)
In October 2018, Aerodyne sent Keirton an approval drawing for the bespoke
cyclones that Keirton fit to its trimmer. (Id., ¶ 44, PageID #1021.) These approval
drawings contained a higher level of detail and dimensional data than the earlier
drawings Aerodyne provided to Keirton and included a confidentiality clause. (Id.)
Over the course of approximately two years, Aerodyne delivered more than 30
cyclones to Keirton and continued to adapt its cyclone design to better fit Keirton’s
application. (Id., ¶¶ 46–52, PageID #1022–23.) Plaintiff alleges that each cyclone it
delivered to Keirton had a metal tag affixed to it containing Plaintiff’s name, logo,
address in Chagrin Falls, Ohio, and model and serial numbers.

(Id., ¶¶ 50–51,

PageID# 1022.)
B.

Keirton’s Requested Modifications

In 2019, Keirton requested design improvements to Aerodyne’s cyclone that
would make it easier to clean. (Id., ¶ 60, PageID #1024.) However, Keirton was
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dissatisfied with Aerodyne’s unwillingness to implement proposed changes to the
cyclone’s door design to allow easier access for cleaning.

(Id., ¶¶ 66–67,

PageID #1026.) Ultimately, Keirton contacted SIDMAC about producing modified
cyclones. (Id., ¶¶ 68–70, PageID #1026–27.)
SIDMAC is a Canadian corporation with a principal place of business in
British Columbia, Canada. (Id., ¶ 14, PageID #1015.) SIDMAC provides engineering
and manufacturing services to customers primarily in the craft beer, distillery, and
wine industries.

(Id., ¶ 15, PageID #1015; ECF No. 85, ¶¶ 2–3, PageID #1652.)

Keirton is SIDMAC’s only customer for cyclones. (ECF No. 85, ¶ 4, PageID #1653.)
SIDMAC does not regularly do business or advertise in Ohio, and Aerodyne does not
allege that it does. (Id., ¶ 11, PageID #1654.) But SIDMAC’s website is accessible by
internet-users in Ohio. (ECF No. 90-2, ¶ 10, PageID #1774.) SIDMAC reports one
sale to an Ohio purchaser that is unrelated to its relationship with Keirton and that
occurred in Canada, not Ohio. (ECF No. 85, ¶ 11, PageID #1654.)
In August or September 2019, Keirton hosted SIDMAC Chief Operating Officer
Balbir Sindhu and another SIDMAC representative at its facility in British
Columbia, Canada. (ECF No. 60, ¶ 69, PageID #1026.) During that meeting, Keirton
informed SIDMAC’s representatives that it wanted to modify the cyclone it was
currently using on its trimmers and was interested in hiring SIDMAC to create an
allegedly new and modified design for Keirton cyclones. (Id., ¶ 70, PageID #1026–27.)
On September 10, 2019, Keirton engineer Nick Cottrell followed up with SIDMAC to
summarize the meeting and discuss a plan to send the Aerodyne-manufactured

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cyclone in Keirton’s possession to SIDMAC’s shop in Abbotsford, British Columbia.
(Id., ¶ 71, PageID #1027; ECF No. 60-4 (redacted).) Cottrell also included a list of the
proposed modifications and a pack-and-go folder with basic models for SIDMAC’s use
in pricing the project. (Id.) Sindhu, apparently eager to secure Keirton’s business,
told Keirton that SIDMAC would do “what we need to do to win this order.” (ECF
No. 60, ¶ 90, PageID #1030; ECF No. 60-4, PageID #1147 (redacted).)
Plaintiff alleges on information and belief that the pack-and-go folder
contained Aerodyne’s approval drawings with the dimensions of its horizontal cyclone
and the confidentiality clause. (ECF No. 60, ¶ 72, PageID #1027.) So far, based on
discovery from Keirton, Plaintiff’s counsel declares that there is no evidence yet that
the pack-and-go folder contained the approval drawings.

(ECF No. 90-2, ¶ 9,

PageID #1774.)
During negotiations with SIDMAC, Keirton insisted that it maintain the rights
to the information it sent to SIDMAC as well as the designs SIDMAC prepared for
Keirton. (ECF No. 60, ¶ 74, PageID #1027.) However, Plaintiff argues that SIDMAC
should have known that Keirton did not own the information and cyclone it provided
to SIDMAC because Keirton did not know certain basic information the owner of a
trade secret would know. For example, according to Aerodyne, Keirton would have
known the dimensions of the cyclone. (ECF No. 89, PageID #1702–03.) Instead,
Plaintiff alleges that Keirton had to rely on SIDMAC to ascertain those dimensions
and reverse-engineer the cyclone. (Id.; ECF No. 60, ¶¶ 75–77, PageID #1027–28.)

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C.

Keirton Engages SIDMAC, Stops Ordering Aerodyne Cyclones

In October 2019, Keirton sent a purchase order to SIDMAC for the “Cyclone
Design Improvements.”

(ECF No. 60, ¶¶ 91–94, PageID #1030.)

According to

Sindhu, SIDMAC used the cyclone Aerodyne sent for overall measurements because
it fit Keirton’s trimmers but created its own design drawings from scratch to
accommodate the modifications that Keirton requested. (ECF No. 85, ¶ 9, PageID
#1654.) SIDMAC delivered Keirton drawings for its modified cyclone in May 2021.
(ECF No. 60, ¶ 110, PageID #1034.) After that, Keirton stopped ordering Aerodyne
cyclones.

(Id., ¶ 113, PageID #1034.)

However, in December 2021, a Keirton

representative sent Aerodyne an inquiry about manufacturing two cyclone parts to
fit the drawings SIDMAC prepared. (Id., ¶ 115, PageID #1034.) On review of the
fabrication drawings, Aerodyne believed the cyclone to be a near replica of its
horizontal cyclone, which alerted it to its potential claims against Keirton. (Id.,
¶¶ 117–120, PageID #1035.)
On March 29, 2022, after Aerodyne learned of Keirton’s relationship with
SIDMAC through discovery, and after the Court denied Aerodyne’s motion for a
temporary restraining order (ECF No. 19), Aerodyne sent a cease-and-desist letter to
SIDMAC, copying Keirton’s counsel (ECF No. 60, ¶¶ 132–34, PageID #1037; ECF
No. 60-12.) While this lawsuit remains pending, Aerodyne sought to stop SIDMAC
from manufacturing the allegedly copy-cat cyclones.

(ECF No. 60, ¶ 135,

PageID #1037.) After SIDMAC received the cease-and-desist letter, it continued to
work with Keirton to manufacture cyclones for Keirton’s trimmers. (Id., ¶ 137,

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PageID #1037–38.) On April 18, 2022, Plaintiff amended its complaint to name
SIDMAC as a Defendant. (ECF No. 60.)
STATEMENT OF THE CASE
Plaintiff asserts four claims against SIDMAC:

(1) violation of the Ohio

Uniform Trade Secrets Act (Count IX); (2) theft of trade secrets under 18 U.S.C.
§ 1832 (Count X); (3) a claim for injunctive relief for misappropriation of trade secrets
under federal and State law (Count XI); and (4) civil conspiracy (Count XII). (ECF
No. 60, ¶¶ 209–40, PageID #1050–55.) SIDMAC moves to dismiss for lack of personal
jurisdiction under Rule 12(b)(2). (ECF No. 84 (redacted); ECF No. 87 (sealed).)
ANALYSIS
SIDMAC moves to dismiss the claims against it under Rule 12(b)(2) of the
Federal Rules of Civil Procedure, arguing that the Court lacks personal jurisdiction
over it. “Personal jurisdiction falls into two categories: general and specific.” Malone
v. Stanley Black & Decker, Inc., 965 F.3d 499, 501 (6th Cir. 2020) (citing Goodyear
Dunlop Tires Operations, S.A. v. Brown, 564 U.S. 915, 919 (2011)). Plaintiff makes
no argument that SIDMAC is subject to general jurisdiction, and the record does not
support the exercise of general jurisdiction over SIDMAC.
To establish specific personal jurisdiction over a defendant, the Court must
find that (1) the defendant is amenable to service of process under the State’s longarm statute; and (2) the exercise of personal jurisdiction is proper under the Due
Process Clause. Conn v. Zakharov, 667 F.3d 705, 711 (6th Cir. 2012). No matter if
“jurisdiction arises under 28 U.S.C. §§ 1331 or 1332, Plaintiff must satisfy the forum

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state’s requirements for personal jurisdiction.” Georgalis v. Facebook, Inc., 324 F.
Supp. 3d 955, 958 (N.D. Ohio 2018). “Even if a defendant’s contact with the State of
Ohio satisfies Ohio’s long-arm statute, personal jurisdiction fails unless exercising
jurisdiction over the defendant comports with traditional notions of fair play and
substantial justice.” J.M. Smucker Co. v. Hormel Food Corp., 526 F. Supp. 3d 294,
300 (N.D. Ohio 2021).
Where, as here, a defendant files a properly supported motion to dismiss for
lack of personal jurisdiction, “a plaintiff must prove that jurisdiction is proper over
each defendant individually.” Zobel v. Contech Enters., 170 F. Supp. 3d 1041, 1044
(S.D. Ohio 2016) (quoting SFS Check, LLC v. First Bank of Del., 744 F.3d 351, 354–56
(6th Cir. 2014)).

The district court may “decide the motion on the materials

submitted, permit discovery in order to aid in deciding the motion, and/or [] conduct
an evidentiary hearing.” Georgalis, 324 F. Supp. 3d at 958 (citing Theunissen v.
Matthews, 935 F.2d 1454, 1458 (6th Cir. 1991)). Both parties agree that the Court
can decide this motion without further discovery or an evidentiary hearing. (ECF
No. 89, Page ID #1700; ECF No. 98, Page ID #1851–53 (sealed); ECF No. 99, Page ID
#1874–76 (redacted).) Based on the briefs and the record, and at the suggestion of
counsel, the Court exercises its discretion to decide the motions without an
evidentiary hearing.
Therefore, the Court considers the pleadings and declarations in the light most
favorable to Plaintiff. MAG IAS Holdings, Inc. v. Schmuckle, 854 F.3d 894, 899 (6th
Cir. 2017); Dean v. Motel 6 Operating L.P., 134 F.3d 1269, 1272 (6th Cir. 1998)

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(quoting CompuServe, Inc. v. Patterson, 89 F.3d 1257, 1262 (6th Cir. 1996)). “[A] court
disposing of a Rule 12(b)(2) motion does not weigh the controverting assertions of the
party seeking dismissal,” but may consider a defendant’s undisputed factual
assertions.

CompuServe, 89 F.3d at 1262; Theunissen, 935 F.2d at 1459.

And

Plaintiff “need only make a prima facie case that the Court has jurisdiction.” Conn,
667 F.3d at 711. In this procedural posture, Plaintiff’s burden is “relatively slight.”
American Greetings Corp. v. Cohn, 839 F.2d 1164, 1169 (6th Cir. 1988). Still, a prima
facie showing of jurisdiction requires “establishing with reasonable particularity
sufficient contacts between [the defendant] and the forum state to support
jurisdiction.” Neogen Corp. v. Neo Gen Screening, Inc., 282 F.3d 883, 887 (6th Cir.
2002). “Dismissal in this procedural posture is proper only if all the specific facts
which the plaintiff . . . alleges collectively fail to state a prima facie case for
jurisdiction.” J.M. Smucker Co. v. Promotion in Motion, Inc., 420 F. Supp. 3d 646,
653 (N.D. Ohio 2019) (quotation and citation omitted).
I.

Ohio’s Long-Arm Statute
Ohio’s long-arm statute confers specific personal jurisdiction over a defendant

who engages in any of nine acts that occur “in this state.”

Ohio Rev. Code

§ 2307.382(A)(1)–(9) (1988). In April 2021, the Ohio General Assembly extended the
State’s long-arm statute to the limits of the Constitution.

See Ohio Rev. Code

§ 2307.382(C) (“[A] court may exercise personal jurisdiction over a person on any
basis consistent with . . . the United States Constitution.”). This dispute arose in
2019, before that amendment. See Ohio Rev. Code § 1.48 (“A statute is presumed to
be prospective in its operation unless expressly made retrospective.”).
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Further,

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Aerodyne argues Ohio’s long-arm statute reaches SIDMAC under a provision that the
amendment did not alter, Section 2307.382(A)(6). For these reasons, the Court first
considers whether that section of the long-arm statute authorizes the exercise of
jurisdiction over SIDMAC. This provision reaches a person who commits a tort
outside the State but causes injury in Ohio. In relevant part, it provides:
(A)

A court may exercise personal jurisdiction over a person who acts
directly or by an agent, as to a cause of action arising from the
person’s:
(6)

Causing tortious injury in this state to any person by an
act outside this state committed with the purpose of
injuring persons, when he might reasonably have expected
that some person would be injured thereby in this state[.]

Ohio Rev. Code § 2307.382(A)(6).
Taking the allegations and record in the light most favorable to Plaintiff, as
the Court must in the current procedural posture, Aerodyne has not made a prima
facie showing that Ohio’s long-arm statute reaches SIDMAC. Plaintiff maintains
that SIDMAC engaged in tortious conduct when it reverse-engineered a cyclone for
Keirton under circumstances that should have raised a red flag that another entity
had a proprietary interest in the cyclone. (ECF No. 60, ¶¶ 71–94, PageID #1027–30.)
Specifically, SIDMAC received an Aerodyne cyclone from Keirton that included a
metal tag with Aerodyne’s name, logo, address in Ohio, and model and serial
numbers. (Id., ¶¶ 50–51, PageID# 1022; ¶ 71, PageID #1027.) Plaintiff also alleges
on information and belief that SIDMAC received a pack-and-go folder of Aerodyne’s
approval drawings and cyclone dimensions from Keirton that included a
confidentiality clause. (Id., ¶ 72, PageID #1027.)
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However, Plaintiff’s counsel

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declares that there is no evidence yet that the pack-and-go folder contained the
approval drawings. (ECF No. 90-2, ¶ 9, PageID #1774.) Based on those facts alone,
Plaintiff claims, SIDMAC knew or at least should reasonably have expected that its
conduct in Canada caused tortious injury to Aerodyne in Ohio. If that were not
enough, however, Plaintiff argues that, after March 29, 2022, when it sent a ceaseand-desist letter to SIDMAC, SIDMAC knew it was engaging in tortious conduct by
selling its modified cyclones to Keirton and that its tortious conduct was harming
Aerodyne, an Ohio company. (ECF No. 60, ¶ 137, PageID #1037–38.)
Under Section 2307.382(A)(6) of the long-arm statute, a defendant must
engage in the alleged tortious conduct with the “purpose” of causing, harm but in
circumstances in which it might only “reasonably expect” that harm to occur in Ohio.
At most, the communications between SIDMAC and Keirton—both Canadian entities
located in British Columbia (id., ¶ 14, PageID #1015)—demonstrate that SIDMAC’s
chief operating officer (Sindhu) acted not with intent to cause another entity harm,
but to gain Keirton’s business (ECF No. 60-4 (redacted).) Still, reckless disregard
might satisfy the long-arm statute, but the record falls short of establishing that
SIDMAC acted recklessly. Perhaps, SIDMAC might have questioned Keirton about
the origins of the cyclone and its drawings, but a failure to make that inquiry does
not demonstrate the purposeful tortious conduct Ohio’s long-arm statute requires.
As for SIDMAC’s conduct after the cease-and-desist letter, the record changes
only in one respect—namely, the letter put SIDMAC on notice that Aerodyne claimed
a trade secret interest in its work with Keirton. Still, contested litigation between

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Aerodyne and Keirton does not necessarily mean that SIDMAC purposefully acted to
injure Aerodyne. Without more, this additional fact fails to bring SIDMAC’s conduct
within the reach of Ohio’s long-arm statute.
Plaintiff points to Dayton Superior Corp. v. Yan, 288 F.R.D. 151 (S.D. Ohio
2012), for the proposition that a non-resident can be haled into court in Ohio for
alleged trade secret misappropriation outside the State.

(ECF No. 89, PageID

#1707–08.) But in that case a former employee of an Ohio company, who interacted
with company leadership in Ohio and even visited Ohio, started his own company in
Missouri using allegedly confidential information the former employee intentionally
took from the plaintiff. Dayton Superior, 288 F.R.D. at 157–58. There, Section
2307.382(A)(6) conferred personal jurisdiction over non-resident defendants who,
while still employed by an Ohio company, took confidential customer information and
obtained below-market pricing for their new business to purchase the Ohio company’s
products. Id. at 167–68. (Additionally, but not relevant here, another provision of
Ohio’s long-arm statute also conferred jurisdiction there because the alleged
tortfeasors engaged in a persistent course of conduct in Ohio. Id. at 166–67.) Unlike
in Dayton Superior, where the defendants were disgruntled former employees who
intentionally acted to harm the plaintiff, SIDMAC’s acts (taking Aerodyne’s version
of them as true) do not demonstrate that SIDMAC acted with the purpose of causing
injury to Aerodyne or directing tortious injury at the forum.
Accordingly, the Court concludes that jurisdiction is not proper over SIDMAC
under Ohio’s long-arm statute. However, because the post-amendment long-arm

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statute might arguably apply, or assuming the Court erred in this jurisdictional
determination, the Court will proceed to analyze whether the exercise of personal
jurisdiction over SIDMAC comports with due process out of an abundance of caution.
II.

Due Process
Specific personal jurisdiction comports with due process under the

Constitution where “the defendant has sufficient minimal contacts such that
traditional notions of fair play and substantial justice are not offended” by the
exercise of jurisdiction over a party. Intera Corp. v. Henderson, 428 F.3d 605, 615
(6th Cir. 2005) (cleaned up); see also International Shoe Co. v. State of Wash., 326
U.S. 310, 316 (1945). In making this determination, courts examine whether (1) the
defendant purposefully avails himself of the privilege of acting or causing a
consequence in the forum State; (2) the cause of action arises from the defendant’s
activities there; and (3) the defendant’s acts or the consequences of those acts have a
substantial enough connection with the forum to make the exercise of jurisdiction
over the defendant reasonable. Bird v. Parsons, 289 F.3d 865, 874 (6th Cir. 2002)
(quoting Southern Mach. Co. v. Mohasco Indus., Inc., 401 F.2d 374, 381 (6th Cir.
1968)); LAK, Inc. v. Deer Creek Enters., 885 F.2d 1293, 1299 (6th Cir. 1989).
II.A. SIDMAC’s Contacts with Ohio
Specific jurisdiction exposes the defendant to suit in the forum state only on
claims that “arise out of or relate to the defendant’s contacts with the forum.”
Daimler AG v. Bauman, 571 U.S. 117, 122 (2014). “[T]he question of whether a
defendant has purposefully availed itself of the privilege of doing business in the
forum state is the ‘sine qua non for in personam jurisdiction.’” CompuServe, 89 F.3d
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at 1263 (quoting Southern Mach., 401 F.2d at 381–82). In other words, there must
be a substantial connection between a defendant’s conduct and the forum state such
that the defendant would “reasonably anticipate being haled into court there.”
Burger King Corp. v. Rudzewicz, 471 U.S. 462, 474–75 (1985) (quoting World-Wide
Volkswagen Corp. v. Woodson, 444 U.S. 286, 297 (1980)). This standard protects
defendants against being haled into court in the forum by virtue of random,
fortuitous, or attenuated contacts. Intera, 428 F.3d at 616 (citing Calphalon Corp. v.
Rowlette, 228 F.3d 718, 722 (6th Cir. 2000)).
SIDMAC’s actions giving rise to Aerodyne’s claims occurred in Canada.
SIDMAC’s only contact with Ohio is the effect its allegedly tortious conduct has had
on Aerodyne, an Ohio company. Where a plaintiff alleges a foreign defendant’s
conduct outside the forum State caused it harm within the forum, courts apply the
“effects test” from the Supreme Court’s decision in Calder v. Jones, 465 U.S. 783
(1984). In Calder, the Supreme Court ruled that personal jurisdiction over two
Florida defendants was proper in California, where the plaintiff sued for defamation
after the defendants published an article about her in the National Inquirer. Id. at
113. California was “the focal point both of the story and the harm suffered,” so the
defendants’ actions were intentional and aimed at California, and the defendants
knew the harm would be felt there. Id. Later, the Supreme Court clarified in Walden
v. Fiore, 571 U.S. 277, 290 (2014), that Calder’s effects test requires a defendant’s
conduct to connect him to the forum in a meaningful way, and “mere injury to a forum
resident is not a sufficient connection to the forum.”

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This case falls somewhere along the continuum of the effects test between
Calder, where the defendants knowingly directed tortious conduct at the residents of
another State, and Walden, where injury without more did not suffice for the
constitutional exercise of personal jurisdiction. Plaintiff argues that, like Calder,
SIDMAC directed conduct at an Ohio party when it reverse-engineered the cyclone
based on information from Keirton received in the pack-and-go folder and the actual
cyclone itself, which the Court assumes had the metal tag affixed identifying
Aerodyne and its address in Ohio. (ECF No. 60, ¶¶ 211–14, PageID #1051; ¶ 224,
PageID #1052; ¶¶ 229–30.) According to Plaintiff, SIDMAC should have known the
cyclone constituted the intellectual property of another entity because Aerodyne’s
name and address were on the cyclone and because a reasonable and knowledgeable
actor would understand that Keirton did not act as if it owned the trade secrets at
issue.

(Id., ¶ 73, PageID #1027; ¶ 212, PageID #1051; ECF No. 89, PageID

#1702–03.) Finally, Plaintiff maintains that, after it sent SIDMAC a cease-and-desist
letter, SIDMAC knew without doubt that it was causing harm to Aerodyne in Ohio.
(Id., ¶¶ 134–37, PageID #1037–38.)
These facts fall far closer to the Walden end of the spectrum than to Calder.
They fail to make a prima facie showing that SIDMAC expressly aimed its conduct
at the forum State. To the contrary, taking Plaintiff’s allegations as true, SIDMAC’s
contacts with Ohio are an attenuated result of Keirton’s decision to do business with
an Ohio company, not SIDMAC’s intentional conduct directed at the forum.
SIDMAC’s only connection with Ohio is the harm it allegedly caused Aerodyne by

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designing and manufacturing cyclones for Keirton in Canada. As the Supreme Court
clarified in Walden, what amounts to little more than mere injury is not enough to
satisfy the due-process requirement that a defendant have minimum contacts with
the forum State.
Plaintiff relies on an Alfa Corporation v. Alfagres, S.A., 385 F. Supp. 2d 1230
(M.D. Al. 2005), to assert that where foreign defendants infringe on intellectual
property rights and disregard cease-and-desist letters, they can expect to be haled
into court in another jurisdiction. (ECF No. 89, PageID #1711.) However, in Alfa,
the U.S. Patent & Trademark Office also rejected the defendant’s trademark
application because the plaintiff already registered the mark. Alfa, 385 F. Supp. 2d
at 1236. That fact, in addition to the cease-and-desist letter Alfa sent, demonstrated
that the defendant “knew it was likely committing trademark infringement
specifically against Alfa in [the forum state] and continued to do so anyway.” Id.
Registered trademarks and trade secrets are both protected under federal law—but
trademark registrations are centralized and publicly available. This distinguishes
Alfa, where the defendant continued to use a trademark after the U.S. PTO notified
it of a competing registered mark, from this case.

And counsel agreed at oral

argument that the due-process analysis differs for trade secrets and other intellectual
property such as trademarks and patents.
Finally, SIDMAC’s sale of a pressure valve to an Ohio resident in 2021 does
not change the due-process analysis. (ECF No. 85, ¶ 11, PageID #1645.) That sale
involves a different product and took place in Canada. That is, SIDMAC had no say

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in where the buyer used or transported the product after it took title in Canada. This
sale has no bearing on the question of specific jurisdiction at issue. In the end, the
conduct in which Aerodyne alleges SIDMAC engaged has far too attenuated an effect
in the forum State for the Court to exercise personal jurisdiction over SIDMAC
consistent with due process.
II.B. Fair Play and Substantial Justice
Even if due process permitted the exercise of personal jurisdiction, the exercise
of jurisdiction must comport with traditional notions of fair play and substantial
justice. In making this determination, the Court considers: (1) the burden on the
defendant; (2) the forum State’s interest in adjudicating the dispute; (3) the plaintiff’s
interest in obtaining convenient and effective relief; (4) the interstate judicial
system’s interest in obtaining the most efficient resolution of controversies; and
(5) the shared interest of the States in furthering certain social policies. Bird, 289
F.3d at 874 (quoting Southern Mach., 401 F.2d at 381); LAK, 885 F.2d at 1299.
SIDMAC argues that the Court’s exercise of jurisdiction does not comport with
fair play and substantial justice because the burden on it as a Canadian company to
appear and defend itself in a foreign jurisdiction where it conducts no business is
substantial.

(ECF No. 84, PageID #1648 (redacted); ECF No. 87, PageID #1682

(sealed).) As Plaintiff’s counsel conceded at oral argument, Plaintiff could choose to
sue SIDMAC in its home forum of British Columbia, Canada. Plaintiff contends
Ohio’s interest in enforcing the trade secret rights of Aerodyne, an Ohio company, is
high. (ECF No. 89, PageID #1713–14.) At oral argument, Plaintiff also argued the
burden on SIDMAC is low because it is represented by the same counsel as Keirton,
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who has voluntarily submitted to the Court’s jurisdiction and will remain in the case.
Without question, Ohio has a strong interest in adjudicating this dispute and
providing relief for its residents who suffer injury at the hands of non-residents. In
this respect, Aerodyne’s interests overlap to a significant degree with those of the
State.
But the interstate—and international—judicial system provides a strong
countervailing interest that cautions restraint where, as here, a litigant seeks to hale
a foreign defendant into a federal court. Additionally, the burden on SIDMAC to
litigate in Ohio weighs against the exercise of jurisdiction under traditional notions
of fair play and substantial justice. While sharing counsel with Keirton somewhat
decreases the financial burden on SIDMAC to appear in Ohio, it does nothing to
relieve the burden on the time and resources of its personnel and representatives.
And Plaintiff can effectively litigate to protect its trade-secret rights against SIDMAC
in a proper forum. In the end, the Court finds that traditional notions of fair play
and substantial justice do not support the exercise of personal jurisdiction over
SIDMAC where its connection to the forum State is so attenuated.
CONCLUSION
For the foregoing reasons, the Court GRANTS Defendant SIDMAC’s motion
to dismiss for lack of personal jurisdiction.
SO ORDERED.
Dated: September 15, 2022

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J. Philip Calabrese
United States District Judge
Northern District of Ohio

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