Ingeniador LLC v. Kellyco, Inc. et al

Filing 46

ORDER re: 33 Motion to Dismiss. Kellyco's affidavit due by 9/30/2014.Signed by US Magistrate Judge Silvia Carreno-Coll on 9/9/2014.(NBB)

IN THE UNITED STATES COURT
FOR THE DISTRICT OF PUERTO RICO

INGENIADOR, LLC,
Plaintiff,
v.

CIV. NO.: 13-1655(SCC)

THE LORD’S CO. OF
ORLANDO, INC.,
Defendant.

ORDER
Defendant in this case, The Lord’s Company of Orlando,
doing business as Kellyco, has filed a motion to dismiss the
patent complaint against it for lack of personal jurisdiction.
Docket No. 33. Plaintiff Ingeniador opposes the motion
principally on the grounds that Kellyco maintains a highly
interactive infringing website by which Kellyco may make
sales to Puerto Rico. Recently, in another patent case involving
the same plaintiff, I had occasion to consider much the same
question, see Ingeniador, LLC v. Jeffers, Inc., Civ. No. 13-1654,

INGENIADOR v. THE LORD’S CO.

Page 2

2014 WL 2918586 (D.P.R. June 26, 2014), and I think the
discussion of the relevant law in that case is useful here as well.
In Jeffers, I described the Federal Circuit’s opinion in Trintec
Industries. Id. at *2 (citing Trintec Indus., Inc. v. Pedre Promotional
Prods., Inc., 395 F.3d 1275 (Fed. Cir. 2005)). There, the Federal
Circuit held that a website “available to all customers throughout the country” does not specifically target any particular
forum. Trintec Indus., 395 F.3d at 1281 (internal quotations
omitted). Considering the seminal case of Zippo Manufacturing
Co. v. Zippo Dot Com, Inc., 952 F. Supp. 1119 (W.D. Penn. 1997),
the Trintec court held that its applicability turned on “whether
and how often the website’s interactive sales features had been
used in the jurisdiction.” Jeffers, 2014 WL 2918586, at *2 (citing
Trintec Indus., 395 F.3d at 1281). I also discussed the Northern
District of Illinois’s opinion in Original Creations, which held
that “the Federal Circuit will not find that mere allegations of
potential, but as-yet-unquantified, sales to forum residents via
a defendant’s website are sufficient to support an exercise of
personal jurisdiction.” Original Creations, Inc. v. Ready Am., Inc.,
836 F. Supp. 2d 711, 715 (N.D. Ill. 2011), quoted by, Jeffers, 2014
WL 2918586, at *2 n.5. Original Creations thus suggests that a
very small number of website-originated sales into a forum

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state will not satisfy the Federal Circuit’s personal jurisdiction
test. See id. at 716.
With this discussion as background, I find that I cannot
determine from the record before me whether personal
jurisdiction exists over Kellyco. In particular, I find that
because it is Kellyco’s website—not its products—that allgedly
infringes Ingeniador’s patents, it is important to know exactly
how many website-originated sales have been consummated
in Puerto Rico. But the record speaks only of gross sales to
Puerto Rico, without any mention of the website. Rather than
open a period of jurisdictional discovery, I think the simpler
course is to order Kellyco to file an affidavit containing the
following information:
(1) The total number of website-originated sales made into
Puerto Rico since October 15, 2011;
(2) The total number of sales made into Puerto Rico since
October 15, 2011;
(3) The revenue generated by the sales mentioned in
categories (1) and (2);
(4) Data on total revenue and sales since October 15, 2011;
and
(5) Information regarding what percentage of Kellyco’s

INGENIADOR v. THE LORD’S CO.

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sales and revenue come from website-originated sales,
as opposed to sales made by other means, such as
authorized agents.
Kellyco shall file an affidavit containing this information by
September 30, 2014.
IT IS SO ORDERED.
In San Juan, Puerto Rico, this 9th day of September, 2014.
S/ SILVIA CARREÑO-COLL
UNITED STATES MAGISTRATE JUDGE