Batinkoff v. Church & Dwight Co.
| Decision Date | 31 March 2020 |
| Docket Number | Case No. 3:18-cv-16388-BRM-LHG |
| Parties | RANDALL BATINKOFF and TOP SECRET, Plaintiffs, v. CHURCH & DWIGHT CO., INC. AND MARK H. KRESS, Defendants. |
| Court | U.S. District Court — District of New Jersey |
NOT FOR PUBLICATION
Before the Court is Defendant Mark H. Kress ("Kress" or "Defendant") Motion to Dismiss Plaintiffs Randall Batinkoff ("Batinkoff") and Top Secret's ("Top Secret") (collectively, "Plaintiffs") Second Amended Complaint pursuant to Federal Rules of Civil Procedure 12(b)(2) for lack of personal jurisdiction and 12(b)(6) for failure to state a claim upon which relief can be granted. (ECF No. 40.) Plaintiffs oppose the Motion. (ECF No. 49.) Kress has filed a Reply. (ECF No. 52.) Also before the Court is Plaintiffs' Motion to Dismiss co-Defendant Church & Dwight Co. Inc.'s ("Church & Dwight" or "Defendant") Counterclaims I and II for failure to state a claim upon which relief can be granted under Federal Rule of Civil Procedure 12(b)(6). (ECF No. 49.) Church & Dwight opposes that Motion. (ECF No. 54.) Plaintiffs have filed a Reply. (ECF No. 56.) Having reviewed the filings submitted in connection with the motions and having declined to hold oral argument pursuant to Federal Rule of Civil Procedure 78(b), for the reasons below and for good cause shown, Kress's Motion to Dismiss is GRANTED in part and DENIED in part, and Plaintiffs' Motion to Dismiss Church & Dwight's Counterclaims I and II is DENIED.
At issue in this litigation are patents that make possible spray-on hair. Randall Batinkoff is a California actor who is the named inventor of U.S. Patent No. 7,841,494 ("the '494 patent"), which was issued November 30, 2010. (.) The '494 patent, titled "Pump Dispenser," is a one-handed pump cap for dispensing hair fibers without clogging. (Id. ¶¶ 7, 9, Ex. 1 at 30.)
Top Secret is a California corporation with a principal place of business at 1413 Ashland Ave, Santa Monica, Calif., 90405. (Id. ¶ 2.) Batinkoff is president of Top Secret. (Id. ¶ 3.) Batinkoff is the sole assignee of the '494 patent. (Id. ¶ 10.) Plaintiffs do not state when Top Secret was incorporated or began operations. Plaintiffs say Top Secret had an "implied right" to the invention until March 11, 2019, when Top Secret entered an "exclusive license agreement" for the patent. (Id. ¶ 4.) Under that agreement, Batinkoff retains rights to the '494 patent. (Id.)
Kress is a California resident who holds U.S. Patent No. 8,172,115 ("the '115 patent"), called "Hair Building Solids Dispenser for One Handed Operation" and issued May 8, 2012. (Id. ¶¶ 6, 67.) Kress founded and was chief executive of a Delaware corporation called Spencer Forrest, Inc. ("Spencer Forrest"), with a principal place of business at 1122 Tower Road, Beverly Hills,Calif., 90210. (Id. ¶¶ 6, 16, 37.) Spencer Forest sold a spray-on hair product line called Toppik™ that includes a cap that "allows for a more precise application" of hair fibers. (Id. ¶¶ 9, 17.)
Plaintiffs argue the '115 patent is an attempt to copy Batinkoff's invention and is likely invalid over the '494 patent. (Id. ¶ 26). Plaintiffs further contend Kress was the public face of Toppik™, appearing in commercials on behalf of the product, as well as directing and managing all of Spencer Forrest's business activities, "including infringing activities alleged in this Complaint until [Spencer Forrest's] sale to Church & Dwight on January 4, 2016." (Id. ¶¶ 19, 23.) Spencer Forrest sold Toppik™ in New Jersey, to Bed Bath & Beyond in Union, New Jersey, and to Harmon Stores in Manalapan, New Jersey and in Bricktown, New Jersey. (Id. ¶¶ 20-22.) "Kress, on at least one occasion, sold the accused infringing product to a resident of New Jersey through [Amazon.com]." (Id. ¶ 18.)
Plaintiffs allege Church & Dwight, and Spencer Forrest and Kress before January 4, 2016, infringed the '494 patent by selling Toppik™ products using the "Toppik Hair Fibers Spray Applicator (also marketed as Toppik™ Hair Spray Applicator)." (Id. ¶ 56.) Plaintiffs further allege Kress failed to pay either Plaintiff any royalty for sales of infringing products since at least 2012, while Church & Dwight failed to pay any royalty for the sales of its infringing products since January 4, 2016. (Id. ¶¶ 57-58.) As a result, Plaintiffs allege damages of lost profits because of the infringing sales by "Kress's Spencer Forrest," and Church & Dwight. (Id. ¶¶ 59-60.)
Batinkoff filed a Complaint on November 21, 2018, alleging one count of direct infringement against Church & Dwight and one count of direct infringement against Kress pursuant to the "Patent Laws of the United States, 35 US.C. § 101 et. seq. [sic]" (ECF No. 1 ¶¶ 4, 14-26, 37-59.) Church & Dwight filed a Motion to Dismiss that Complaint pursuant to FederalRule of Civil Procedure 12(b)(6). (ECF No. 8.) Batinkoff filed an Amended Complaint on February 4, 2019. (ECF No. 9.) The Amended Complaint added three claims of infringement against Church & Dwight, while grounding three of the now four counts against Church & Dwight in provisions of 35 U.S.C. § 271(a), (b), and (c). (Id. ¶¶ 14-57.) The Amended Complaint similarly added three claims of infringement against Kress, grounding three of the now four counts against Kress in the same provisions of Title 35. (Id. ¶¶ 58-98.) The next day, the Court terminated Church & Dwight's Motion to Dismiss the Complaint but granted Defendant permission to file a Motion to Dismiss the Amended Complaint by February 25, 2019. (ECF No. 11.) Church & Dwight filed an Answer to the Amended Complaint on February 19, 2019. (ECF No. 18.) Batinkoff filed a letter application incorrectly as a motion, seeking leave to amend the Amended Complaint on March 15, 2019. (ECF No. 21.) After hearing from the parties on the application and by Letter Order dated April 23, 2019, the Court set a deadline of April 26 for the filing of a Second Amended Complaint. (ECF No. 32.)
Batinkoff sought a two-week extension (ECF No. 36), and a Second Amended Complaint was filed on May 10, 2019 (ECF No. 34). The Second Amended Complaint added Top Secret as a Plaintiff. (Id.) Church & Dwight filed an Answer to the Second Amended Complaint on May 23, 2019, denying any infringement. (ECF No. 39.) The Answer included Counterclaims I and II, seeking declaratory judgments that all claims of the '494 patent are invalid, void, or unenforceable, and that Church & Dwight did not infringe the '494 patent. (Id. ¶¶ 6-15.)
In lieu of filing an Answer, Kress filed this Motion to Dismiss on May 24, 2019. (ECF No. 40.) Plaintiffs filed opposition to the Motion on June 10, 2019. (ECF No. 49.) On June 13, 2019, Plaintiffs filed their Motion to Dismiss Church & Dwight's Counterclaims I and II. (ECF No. 49.) Kress filed a Reply to his Motion to Dismiss on June 24, 2019. (ECF No. 52.) Church & Dwightfiled its opposition to Plaintiffs' Motion to Dismiss its Counterclaims on July 1, 2019. (ECF No. 54.) Plaintiffs filed their Reply on July 8, 2019. (ECF No. 56.)
A plaintiff bears "the burden of demonstrating facts that establish[] personal jurisdiction." Fatouros v. Lambrakis, 627 F. App'x 84, 86-87 (3d Cir. 2015) (citing Metcalfe v. Renaissance Marine, Inc., 566 F.3d 324, 330 (3d Cir. 2009) (quoting Pinker v. Roche Holdings, Ltd., 292 F.3d 361, 368 (3d Cir. 2002)). A court "must accept all of the plaintiff's allegations as true and construe disputed facts in favor of the plaintiff." Pinker, 292 F.3d at 368 (quoting Carteret Sav. Bank, F.A. v. Shushan, 954 F.2d 141, 142 n.1 (3d Cir. 1992)). Pursuant to Federal Rule of Civil Procedure 4(e), a district court may exercise personal jurisdiction according to the law of the state where it sits. "New Jersey's long-arm statute provides for jurisdiction coextensive with the due process requirements of the United States Constitution." Miller Yacht Sales, Inc. v. Smith, 384 F.3d 93, 95 (3d Cir. 2004) (citing N.J. Ct. R. 4:4-4(c)). In other words, this Court's jurisdiction is "constrained, under New Jersey's long-arm rule, only by the 'traditional notions of fair play and substantial justice' inhering in the Due Process Clause of the Constitution." Carteret Sav. Bank, 954 F.2d at 145 (quoting Int'l Shoe Co. v. Washington, 326 U.S. 310, 316 (1945)). "Thus, parties who have constitutionally sufficient 'minimum contacts' with New Jersey are subject to suit there." Miller Yacht Sales, 384 F.3d at 96 (citing Carteret Sav. Bank, 954 F.2d at 149).
The Supreme Court has defined two categories of personal jurisdiction: specific jurisdiction and general jurisdiction. Daimler AG v. Bauman, 571 U.S. 117, 119 (2014) (citing Int'l Shoe Co., 326 U.S. at 317); see also Metcalfe, 566 F.3d at 334 (). Specific jurisdiction existswhen the suit "aris[es] out of or relate[s] to the defendant's contacts with the forum." Daimler AG v. Bauman, 571 U.S. 117, 127, 134 S. Ct. 746, 754 (2014) (citing Helicopteros Nacionales de Colombia, S.A. v. Hall, 466 U.S. 408, 414, n.8, 104 S. Ct. 1868, 80 L.Ed.2d 404 (1984). General jurisdiction requires continuous and systematic contacts, and exists in "situations where a foreign corporation's 'continuous corporate operations within a state [are] so substantial and of such a nature as to justify suit against it on causes of action arising from dealings entirely distinct from those activities.'" Id. (quoting Int'l Shoe Co., 326 U.S. at 318).
"Under traditional jurisdictional analysis, the exercise of specific personal jurisdiction requires that the 'plaintiff's cause of action is related to or arises out of the defendant's contacts with the forum.'" Toys "R" Us, Inc. v. Step Two, S.A., 318 F.3d 446, 451 (3d...
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