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Chicago IP Litigation Tracking Northern District of Illinois IP Cases

Tag Archives: Personal Jurisdiction

Foreign Defendant’s Refusal To Concede Jurisdiction In Any State Creates Jurisdiction

Posted in Federal Rules, Jurisdiction

Snap-On Inc. v. Robert Bosch, LLC, No. 09 C 06914, Slip Op. (N.D. Ill. Sept. 26, 2013) (Kocoras, J.).

Judge Kocoras denied defendant Beissbarth’s Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction in this patent infringement case involving patents relating to an optical wheel alignment system.  Plaintiff asserted jurisdiction over Beissbarth was proper pursuant to Fed. R. Civ. P. 4(k)(2) that establishes jurisdiction if: (1) the plaintiff’s claim arises under federal law: (2) the defendant is not subject to jurisdiction in any state’s court of general jurisdiction; and (3) the exercise of jurisdiction comports with due process. The first requirement was uncontested. The second requirement was satisfied because Beissbarth refused to identify another forum where jurisdiction would be proper.  Under the  Federal Circuit’s burden shifting approach, if a defendant asserts that it cannot be sued in the form state and refuses to identify any other state where suit is possible, Rule 4(k)(2) may be used to establish jurisdiction.  The third requirement of Rule 4(k)(2) was satisfied under the Federal Circuit’s three-part test to determine if personal jurisdiction over a foreign defendant comports with due process: Beissbarth purposefully directed its activities at residents of the United States; the claims against Beissbarth “arise out of” and “relate to” Beissbarth’s activities in the United States; and, exercising jurisdiction would be reasonable and fair.

Court has Jurisdiction Over Foreign Defendant But Service was Not Perfected

Posted in Jurisdiction

Bobel v. U Lighting Am., Inc., No. 12 C 6064, Slip Op. (N.D. Ill. Feb. 16, 2013) (Kennelly, J.).

Judge Kennelly granted in part defendant U Lighting Group’s (“ULG”) motion to dismiss plaintiff’s patent case for lack of personal jurisdiction and improper service.  The Court held that personal jurisdiction was proper:

  • ULG identifies co-defendant U Lighting America (“ULA”) as its US office; and
  • ULG frequently communicates with ULA.

But while the Court had personal jurisdiction, plaintiff did not properly serve ULG.  Plaintiff served ULG by personally serving ULA’s president.  Pursuant to Fed. R. CIv. P. 4(f)(3), plaintiff could have served ULG via its representative.  But plaintiff can only serve in that manner with leave of the Court, which ULG never sought. 

 

  

 

Forum Selection Clause Creates Jurisdiction

Posted in Jurisdiction

Flava Works, Inc. v. Rowader, No. 12 C 7181, Slip Op. (N.D. Ill. Nov. 16, 2012) (Lefkow, J.).

Judge Lefkow denied defendant’s Fed. R. Civ. P. 12(b)(2) motion to dismiss plaintiff Flava Works copyright suit for lack of jurisdiction and improper venue.  Defendant - a California citizen who did not direct any business at Illinois - would not have been subject to general or personal jurisdiction in Illinois.  But defendant accepted a valid forum selection clause including  Chicago by using Flava Works’ website.  While it could be considered an un-negotiable contract of adhesion, defendant could have used another website with a different forum selection clause.

Sales of Similar Products Create Specific Jurisdiction

Posted in Jurisdiction

Pumponator Inc. v. Watersports, LLC, No. 11 C 3956, Slip Op. (N.D. Ill. April 5, 2012) (Aspen, Sen. J.).

Judge Aspen denied the Ketz defendant’s (“Ketz”) Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction in this Lanham Act case involving water-balloon filling devices.  The Court did not address whether it had general jurisdiction over Ketz because it found that it had specific jurisdiction.  While Ketz had not owned real estate, paid taxes, voted or maintained offices in Illinois, Ketz had sufficient Illinois contacts:

  • Ketz had a single employee visit to Illinois.
  • Ketz had numerous emails with its new Illinois-based suppliers, defendant Water Sports.
  • Ketz had received about $1,000 in commission from Water Sports.
  • Approximately 147 Illinois storefronts placed orders with Ketz.
  • Ketz represented multiple other toy manufacturers in Illinois during the relevant period, with $1.2 M in sales.

Finally, the individual defendant was not protected by the fiduciary shield doctrine because he was the sole owner of Ketz & Associates Inc.

Limited Contracts and Distributor Sales in Illinois Create Jurisdiction

Posted in Jurisdiction

Original Creations, Inc. v. Ready Am., Inc., No. 11 C 3453, Slip Op. (N.D. Ill. Oct. 5, 2011) (Bucklo, J.).

Judge Bucklo denied defendant Life+Gear’s Fed. R. Civ. P. 12(b)(2) and (3) motion to dismiss for lack of personal jurisdiction and improper venue in this patent dispute.  While Life+Gear did not have Illinois offices, it did have an interactive website and at least one Illinois sale.  Life+Gear also sold product to two distributors that sold that product in Illinois and Life+Gear was reasonably aware of those channels of sale.

Venue was proper because venue in a patent case exists wherever there is personal jurisdiction.

 

Swarming Does Not Create Jurisdiction

Posted in Pleading Requirements

Millenium TGA v. Doe, No. 10 C 5603, Slip Op. (N.D. Ill. Sep. 26, 2011) (Manning, J.).

Judge Manning dismissed plaintiff Millenium TGA’s case against a Doe defendant identified by its computer IP address ("Doe") for lack of personal jurisdiction. Doe was not an Illinois resident. And Millenium TGA offered no proof that Doe’s actions in allegedly using Bit Torrent to download copyrighted video files were targeted at Illinois. Being part of a Bit Torrent "swarm" that downloaded a video did not rise to the level of targeting Illinois.

Potential Sanctions for Early Discovery Inconsistent With Pleadings

Posted in Summary Judgment

Millennium TGA, Inc. v. Doe, No. 10 C 5603, Slip Op. (N.D. Ill. Aug. 24, 2011) (Manning, J.). 

Judge Manning held in abeyance Doe defendant’s motion to quash a subpoena issued to its alleged internet service provider and Doe’s motion to dismiss the case for lack of personal jurisdiction. Plaintiff Millennium TGA reasoned that the subpoenaed information would allow it to show that Doe’s actions were directed at Illinois and within the Courts’ jurisdiction. 

 

The Court was "troubled" by Millennium TGA’s claims that it needed jurisdictional discovery, as opposed to discovery only seeking Doe’s identity. Millennium TGA already filed a complaint alleging jurisdiction upon information and belief. The Court, therefore, ordered Millennium TGA to file a brief detailing how the information it sought was necessary. And the Court held the motions in abeyance pending that brief. The Court also warned Millennium TGA that it would initiate sanctions proceedings if Millennium TGA had not met its Fed. R. Civ. P 11 obligations.

Soliciting Illinois Customers Creates Jurisdiction

Posted in Jurisdiction

Fasteners for Retail, Inc. v. Andersen, No. 11 C 2164 Slip. Op. (N.D. Ill. Aug. 30, 2011) (Kennelly, J.). 

Judge Kennelly denied defendant Andersen’s motion to dismiss this patent and trade secret case. The Court had personal jurisdiction over Andersen because he worked for defendant K International, an Illinois entity, and Andersen had solicited his former customers in Illinois.

Venue was also proper in the Northern District. A substantial part of the facts at issue occurred in Illinois. The parties’ prior agreement did not release plaintiff’s trade secret claims because they were not contemplated when plaintiff signed the agreement.

No Personal Jurisdiction Based Upon a Passive Website and a Single Advertisement

Posted in Jurisdiction

Modern Trade Comms., Inc. v. PSMJ Resources, Inc., No. 10 C 5380, Slip Op. (N.D. Ill. Aug. 19, 2011) (Pallmeyer, J.).

Judge Pallmeyer granted defendants PSMJ Resources’ ("PSMJ") and Oser Communications’ ("Oser") motion to dismiss for lack of personal jurisdiction in this Lanham Act case involving plaintiff Modern Trade Communications’ ("MTC") rights in its Metal Construction News mark for a metal industry trade publication. At the Metalcon tradeshow in 2010, Oser distributed a daily publication entitled Metal Daily News at PSMJ’s direction. MTC alleged that the Metal Daily News title infringed its Metal Construction News mark, which MTC used to publish an official show guide at the same conference. 

PSMJ was a Massachusetts company without offices or personnel in Illinois. It approximated that 3% of its revenue at the 2009 Metalcon show in Florida was from Illinois residents. PSMJ’s website was not interactive. PSMJ did produce six training seminars unrelated to Metalcon in Illinois. PSMJ’s small revenues from Illinois residents did not create general jurisdiction. While related to Metalcon, PSMJ’s contract with a third party in Illinois did not create specific jurisdiction. And PSMJ’s production of the 2002 Metalcon in Illinois did not create specific jurisdiction because the accused Metal Daily News was only distributed at the 2010 Metalcon in Las Vegas. The Court, therefore, had neither general nor specific jurisdiction over PSMJ.

 

Oser was an Arizona company without offices or personnel in Illinois, although Oser did distribute publications at two to three trade shows per year in Chicago. Oser’s website was passive, except that the 2010 Metal Daily News was available on the site for downloading. Attendance at two to three trade shows each year in Chicago did not create the systematic contacts necessary for general jurisdiction. Oser’s website was not sufficient to create specific jurisdiction. MTC made no allegation that the website was targeted at Illinois, and the availability of the publication as a free download was not sufficient either. And MTC did not allege how Oser’s alleged infringement in Las Vegas was tied to Oser’s Illinois activities. Furthermore, the sale of an advertisement in the Metal Daily News to an Illinois resident, even combined with the website allegations, was not sufficient to create specific jurisdiction.

 

The Court also denied MTC’s motion to amend because it did not allege any new facts that might create personal jurisdiction.

Plaintiff’s Business in Illinois Alone Cannot Create Personal Jurisdiction

Posted in Jurisdiction

Culligan Int’l Co. v. Water Sys. of Birmingham, Inc., No. 10 C 8199, Slip Op. (N.D. Ill. Apr. 27, 2011) (Bucklo, J.).

The Court granted defendants’ Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction in this trademark dispute regarding plaintiff’s CULLIGAN marks. Defendants were Alabama entities without offices, employees or agents in Illinois. All of defendants’ business was conducted in Alabama. The parties’ agreement was negotiated and executed in Alabama, and there was no indication of a choice of law provision selecting Illinois law. The only connection to Illinois was that plaintiff did business in Illinois, and that was not sufficient to create jurisdiction over defendants.

Letters and Emails to State Cannot Alone Create Jurisdiction

Posted in Jurisdiction

TechnoLines, LP v. GST Autoleather, Inc., No. 11 C 965, Slip Op. (N.D. Ill. Jun. 30, 2011) (Grady, J.).

Judge Grady granted defendant GST’s motion to dismiss plaintiffs’ patent claims for improper revenue and lack of production and dismissed the remaining state law claims without prejudice to be refiled pursuant to diversity jurisdiction, if possible.

The Court’s key rulings were:

  • GST’s failed license negotiations with plaintiff Echelon in Illinois alone could not create personal jurisdiction.
  • Echelon residing in Illinois and, therefore, having been allegedly harmed in Illinois does not create personal jurisdiction. GST’s conduct must have been specifically directed at Illinois. And there was no evidence that GST sold product into Illinois.
  • GST’s phone calls and emails to Echelon in Illinois did not create personal jurisdiction.
  • The Court refused supplemental jurisdiction over the remaining state law claims, and gave plaintiff a deadline for repleading based upon diversity jurisdiction, if it could.

Department of Clotted Nonsense: Court Rejects Jurisdiction Over Holding Company

Posted in Jurisdiction

Revenue Realization LLC v. H&R Block, Inc., No. 11 C 85, Slip Op. (N.D. Ill. Apr. 11, 2011) (Shadur, Sen. J.).

Judge Shadur granted defendant H&R Block’s motion to dismiss, after granting plaintiff Revenue Realization leave to file its response to the motion and fully considering it. Revenue Realization accused H&R Block of patent infringement. H&R Block moved to dismiss because it was a passive holding company for a variety of subsidiaries and, therefore, was not the proper H&R Block defendant.

H&R Block offered to identify the proper entities for Revenue Realization. But Revenue Realization refused the offer, as well as the Court’s suggestion that it file against all possible subsidiaries and narrow the defendants based upon the entities’ subsequent motions to dismiss. Instead Revenue Realization argued that the Federal Circuit’s decision in Nuance Commc’ns, Inc. v. Abbyy Software House, 626 F.3d 1222 (Fed. Cir. 2010) confirmed that the Court had jurisdiction over a passive parent entity in patent cases. The Court, however, held that the opinion stood for quite a different proposition and was a "weak reed to lean on." In fact, Nuance dealt with a subsidiary entity that had direct contacts with the forum. In contrast, H&R Block was a true holding company. And the fact that H&R Block defined itself as including its subsidiaries in certain SEC filings was irrelevant to the Court’s analysis.

The Court finished the opinion referring to the New Yorker’s old practice of filling the final page of an article that otherwise would have left a portion blank with a section captioned "Department of Clotted Nonsense" containing amusing quotations and reprinted errors from other publications. The Court then granted plaintiff leave to file its response brief, and noted that the Court had already fully considered it.

Jurisdictional Facts Regarding Website Activity Required Before Default

Posted in Jurisdiction

Deckers Outdoor Corp. v. Does 1-55, No. 114 C 10, Slip Op. (N.D. Ill. May 24, 2011) (Darrah, J.)

Judge Darrah dismissed without prejudice plaintiff’s motion for a default judgment in this Lanham Act case about the UGG mark. The Court held that it would not exercise personal jurisdiction over the Does based solely on interactive websites without additional facts as to whether the websites were aimed at Illinois.

Trading Technologies: Court Grants Limited Jurisdictional Discovery

Posted in Jurisdiction

Trading Techs. Int.’l, Inc. v. BCG Partners, Inc., No. 10 C. 715 (Consolidated), Slip Op. (N.D. Ill. Mar. 28, 2011) (Kendall, J.).

Judge Kendall denied without prejudice defendant’s (collectively "BCG") motion to dismiss for lack of personal jurisdiction. BCG argued that its named entities were holding companies without operational responsibility, and that none had officers in Illinois. Plaintiff Trading Technologies ("TT"), however, produced evidence that one or more of the BCG entities had Illinois officers in Illinois for the purposes of selling the accused eSpeed software. Furthermore, certain government filings suggested that one or more of the BCG entities were operational entities. The Court, therefore, denied BCG’s motion with leave to refile after the parties completed limited jurisdictional discovery and TT replead to the extent it felt necessary.

Defendant Waived Personal Jurisdiction by Its Actions, If Not Its Filings

Posted in Jurisdiction

Salud Natural Entrepreneur, Inc. v. Nutricento Internacional, Inc., No. 09 C 4417, Slip Op. (N.D. Ill. Jan. 27, 2011) (Zagel, J.).

Judge Zagel denied defendant Azteca Products’ ("Azteca") Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction in this Lanham Act case. Azteca’s officer, a non-lawyer, purported to file an answer on Azteca’s behalf. Azteca then hired counsel who participated in Rule 26 scheduling conferences. Azteca’s officer then filed a Rule 12(b)(2) motion to dismiss without counsel, which the Court struck because it was not filed by counsel, and a corporate entity cannot act pro se. The Court then entered a default judgment and an injunction against Azteca. Azteca hired counsel and asked through counsel that the default be vacated. The Court vacated the judgment and agreed to consider whether Azteca’s personal jurisdiction arguments had been waived. Noting the "bizarre posture of the case, the Court held that Azteca had not preserved its jurisdiction arguments.

The answer did not waive Azteca’s arguments because as a pro se filing it was treated as never having been filed. But counsel did participate in Rule 26(f) conferences, although he filed no notice of appearance, and offered no suggestion that Azteca would challenge jurisdiction during that time. Furthermore, jurisdiction was challenged for the first time more than thirty days after the other defendants settled based upon discussions that Azteca did not participate in. Regardless of the legal impact of Azteca’s filings, by the time Azteca challenge jurisdiction, plaintiff had developed a "reasonable expectation" that Azteca would defend itself in Illinois.

Public Records Make Prima Facie Case for Jurisdiction

Posted in Jurisdiction

Insubuy, Inc. v. Community Ins. Agency, No. 10 C 3925, Slip Op. (N.D. Ill. Nov. 9, 2010) (St. Eve, J.).

Judge St. Eve granted counter-plaintiff Community Insurance Agency’s ("CIA") motion for expedited jurisdictional discovery regarding individual counter-defendants. CIA established a prima facie case of personal jurisdiction warranting discovery based upon public records and affidavits that established that the individual defendant:

  • Was a director, owner and the CEO of plaintiff Insubuy.
  • Registers and maintains domains for Insubuy.
  • Had prior notice of CIA’s trademarks and that CIA was an Illinois corporation.

Seventh Circuit Rejects Zippo Sliding Scale for Personal Jurisdiction

Posted in Jurisdiction

Poulsen Roser A/S v. Jackson & Perkins Wholesale, Inc., No. 10 C 1894, Slip Op. (N.D. Ill. Nov. 15, 2010) (St. Eve, J.).

Judge St. Eve denied plaintiff Pousen Rosen’s ("Poulsen") Fed. R. Civ. P. 59(e) and 60(b) motion for reconsideration of the Court’s decision dismissing the case as to the individual defendants for lack of personal jurisdiction in this Lanham Act case.

First, "new evidence" in the form of the District of South Carolina Bankruptcy Court’s order consolidating the corporate defendants was irrelevant and did not alter the Court’s analysis. The Bankruptcy Court made no finding regarding the relationship between the corporate and individual defendants.

Second, the Court reconsidered and upheld its analysis regarding the corporate defendants’ internet contacts. The Seventh Circuit rejected the Zippo case’s sliding scale for internet-based jurisdiction because of the possibility of creating universal jurisdiction:

We note the legitimate concern that "[p]remising personal jurisdiction on the maintenance of a website, without requiring some level of "interactivity" between the defendant and consumers in the forum state, would create almost universal jurisdiction because of the virtually unlimited accessibility of websites across the country." Jennings, 383 F.3d at 550. Courts should be careful in resolving questions about personal jurisdiction involving on-line contacts to ensure that a defendant is not haled into court simply because the defendant owns or operates a website that is accessible in the forum state, even if that site is "interactive."

Illinois v. Hemi Group LLC,

__ F.3d __, 2010 WL 3547647, at *6 (7th Cir. 2010).

Motion to Dismiss Denied as Moot Over Plaintiff’s Objection

Posted in Pleading Requirements

Trading Techs., Intl., Inc. v. BGC Partners, Inc., No. 10 C 715, Slip Op. (N.D. Ill. Aug. 17, 2010) (Kendall, J.).

Judge Kendall denied defendant BGC Partners’ ("BGC") motion to dismiss as moot because of plaintiff Trading Technologies’ ("TT’s") subsequently filed amended complaint. Courts routinely deny without prejudice motions to dismiss when an amended complaint is filed, but this case was unique because TT opposed dismissal. TT argued that BGC’s improper service argument should be dismissed with prejudice and the remaining arguments should be heard to avoid delay because TT continued asserting similar claims in the amended complaint. The service arguments were, however, moot because BGC did not make the service arguments in response to the amended complaint.

The Court also denied the motion to dismiss without prejudice as to the remaining arguments. While the claims may have remained factually similar, BGC’s arguments went to jurisdiction, not the sufficiency of the facts. Furthermore, the amended complaint added several new defendants. BGC and the other defendants would have been prejudiced if they were not given the opportunity to review the amended complaint and to collectively decide how to address any jurisdiction or venue issues.

Unrelated Sales Do Not Create Specific Jurisdiction

Posted in Jurisdiction

Merrill Primack v. Polto, Inc., No. 08 C 4539, Slip Op. (N.D. Ill. Jul. 8, 2010) (Dow, J.).

Judge Dow granted defendants’ Fed. R. Civ. P. 12(b)(2) motion to dismiss this Lanham Act case over plaintiff’s "Credit Lifeline" mark for lack of personal jurisdiction. Plaintiff did not claim general jurisdiction, relying only upon specific jurisdiction. Defendants’ only Illinois contacts were the sale of 212 books unrelated to the Credit Lifeline mark into Illinois. And defendants’ offer for sale of its Credit Lifeline book via an interactive website could not alone create specific jurisdiction. Similarly, injury to intellectual property alone did not create jurisdiction based upon the effects test. Harm to the plaintiff in the jurisdiction did not satisfy the test by itself. Defendant’s actions must have been intentional, aimed at the forum state and defendant had to know that plaintiff’s harm was likely to be suffered. But there was no indication that defendant was even aware of plaintiffs’ Credit Lifeline mark, or of plaintiff, from defendant’s first use of the mark in 2001 until, at the earliest, when plaintiff registered its mark in 2008.

Finally, the Court held that there was no persuasive reason that exercising personal jurisdiction would have comported with "fair play and substantial justice." 

Letter Sent Outside Illinois Cannot Create Jurisdiction

Posted in Jurisdiction

Alta Mere Indus., Inc. v. DBC Window Tinting, Inc., No. 10 C 266, Slip Op. (N.D. Ill. May 6, 2010) (Darrah, J.).

Judge Darrah granted defendant Impact’s Fed. R. Civ. 12(b)(2) motion to dismiss plaintiff Alta Mere’s Lanham Act claims regarding its marks related to automotive window tinting and alarm systems. Impact operated a local Texas business and had no other identified Illinois contacts. Alta Mere argued that the Court had specific jurisdiction over Impact because of Impact’s interactions with other defendants who were Alta Mere franchisees, as well as two letters allegedly sent to Impact warning that a franchise agreement governing defendant Cader’s use of the Alta Mere marks were governed by Illinois law.

The Court considered jurisdiction over each defendant separately and, therefore, did not consider the other defendants’ Illinois contacts in analyzing jurisdiction over Impact. Impact alleged that it never received Alta Mere’s letters. But even if Impact had received them, correspondence sent to a defendant outside the forum could not alone create jurisdiction. The letters were "random, fortuitous, or attenuated contacts."

State Tort Claim Preempted by Patent Claim Where Pleading of Bad Faith Did Not Meet Iqbal Standards

Posted in Pleading Requirements

Viskase Companies, Inc. v. World Pac Int’l AG, No. 09 C 5022, Slip Op. (N.D. Ill. May 10, 2010) (Bucklo, J.).

Judge Bucklo granted declaratory judgment defendants’ (collectively "World Pac") motion to dismiss declaratory judgment plaintiff Viskase’s state law tort claims as preempted by Viskase’s declaratory judgment patent claims. Patent holders have a basis right to assert their patents. In order to make tort claims based upon patent assertions, therefore, Viskase had to show that defendants acted in bad faith in asserting their patents, and the bad faith had both objective and subjective components. Viskase’s general statement of bad faith did not meet the Twombly/Iqbal pleading standards. Furthermore, defendants need not have stated in their assertion letters to third parties that Viskase objected to defendants’ claims.

The Court had specific jurisdiction over foreign defendant World Pac. World Pac’s filing for U.S. patents and its enforcement letters regarding the patents-in-suite created specific jurisdiction.

Tort Claims Preempted by Patent Claims Absent Objective & Subjective Bad Faith

Posted in Jurisdiction

Viskase Companies, Inc. v. World Pac Int’l AG, No. 09 C 5022, Slip Op. (N.D. Ill. May 10, 2010) (Bucklo, J.).

Judge Bucklo granted declaratory judgment defendants’ (collectively "World Pac") motion to dismiss declaratory judgment plaintiff Viskase’s state law tort claims as preempted by Viskase’s declaratory judgment patent claims. Patent holders have a basic right to assert their patents. In order to make tort claims based upon patent assertions, therefore, Viskase had to show that defendants acted in bad faith in asserting their patents, both objectively and subjectively. Viskase’s general statement of bad faith did not meet the Twombly/Iqbal pleading standards. Furthermore, defendants need not have stated in their assertion letters to third parties that Viskase objected to defendants’ claims.

The Court had specific jurisdiction over foreign defendant World Pac. World Pac’s filing for U.S. patents and its enforcement letters regarding the patents-in-suite created specific jurisdiction.

Single Visit to Jurisdiction Before Notice of a Trademark Does Not Create Jurisdiction

Posted in Jurisdiction

Merrill Primack v. Pearl B. Polto, Inc., No. 08 C 4539, Slip Op. (N.D. Ill. Jul. 8, 2009) (Dow, J.).

Judge Dow granted the Polto defendants’ (collectively "Polto") Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction in this Lanham Act dispute regarding plaintiff’s "Credit Lifeline" mark.  Plaintiff alleged only specific jurisdiction, not general jurisdiction.  Plaintiff’s evidence of specific jurisdiction was based upon the following facts: 1) Polto’s 2006 trip to Chicago to put on a Credit Lifeline seminar; and 2) Polto’s interactive website.  Polto, however, had not been aware of plaintiff’s trademark during the 2006 trip.  Plaintiff did not file for its trademark until 2008.  So, when Polto made its 2006 trip there was no evidence of notice of plaintiff’s mark.  Furthermore, no one attended Polto’s 2006 Chicago seminar and Polto returned to Philadelphia immediately after leaving the seminar site.  Finally, the Court held that Polto’s interactive website by itself could not confer specific jurisdiction.

Post-Filing Patent Assignement Cannot Create Standing

Posted in Jurisdiction

MacLean-Fogg Co. v. Edge Composites, L.L.C., No. 08 C 6367, Slip Op. (N.D. Ill. Apr. 14, 2009) (Conlon, J.).

Judge Conlon granted defendants’ motion to dismiss.  Plaintiffs (collectively "MacLean") alleged that defendant Edge Composites ("Edge") violated plaintiffs’ carbon fiber bicycle wheel patent and together with the individual defendant, a former MacLean employee and current Edge employee, violated MacLean’s trade secrets, as well as breaching the individual defendant’s nondisclosure agreement with MacLean.  First, the Court held that the MacLean entities that lacked an ownership in the patent when the complaint was filed lacked standing.  It was not sufficient that the MacLean entities entered an agreement creating joint ownership amongst them after the complaint was filed.

The Court also held that it lacked supplemental jurisdiction over MacLean’s state law trade secret and breach of contract claims.  The patent infringement claims were based upon manufacture and sale of carbon fiber wheels.  The trade secret and breach of contract claims were based upon defendants’ alleged  use of MacLean’s trade secrets.  Because MacLean never met its burden of showing how the claims overlapped factually, the Court dismissed the state law claims for lack of subject matter jurisdiction.

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