Breckenridge Pharmaceutical v. Metabolite

• Decision Date: 03 December 2004
• Docket Number: No. 04-80090-CIV.,04-80090-CIV.
• Parties: BRECKENRIDGE PHARMACEUTICAL, INC., Plaintiff, v. METABOLITE LABORATORIES, INC. and Pamlab, L.L.C., Defendants.
• Court: U.S. District Court — Southern District of Florida

348 F.Supp.2d 1335

BRECKENRIDGE PHARMACEUTICAL, INC., Plaintiff, v. METABOLITE LABORATORIES, INC. and Pamlab, L.L.C., Defendants.

No. 04-80090-CIV.

United States District Court, S.D. Florida.

December 3, 2004.

COPYRIGHT MATERIAL OMITTED

John M. Landis, Stone Pigman Walther Wittmann, New Orleans, LA, Hugh Q. Gottschalk, Wheeler Trigg & Kennedy, Denver, CO, Robert Edward Pershes, L.A. Perkins, Buckingham Doolittle & Burroughs, for plaintiff.

Jane Wollner Moscowitz, Moscowitz Moscowitz & Magolnick, Miami, FL, for plaintiff and defendants.

Glenn K. Beaton, Amanda J. Tessar, J. Gregory Whitehair, Gibson Dunn & Crutcher, Denver, CO, for defendants.

ORDER GRANTING MOTION TO DISMISS AMENDED COMPLAINT ORDER RESETTING TRIAL AND PRETRIAL DEADLINES

COHN, District Judge.

THIS CAUSE is before the Court upon Defendant Metabolite's Motion to Dismiss Complaint for Lack of Personal Jurisdiction [DE 12], Defendants' Motion to Strike Amended Complaint and Request for Decision on Metabolite's Motion to Dismiss [DE 59], Defendant Metabolite's Motion to Dismiss Amended Complaint for Lack of Personal Jurisdiction [DE 62], and the parties' Joint Motion for Enlargement of Pretrial Deadlines and Trial Date [DE 69]. The Court has carefully considered the motions and is otherwise fully advised in the premises.

I. BACKGROUND

Breckenridge Pharmaceutical, Inc. ("Breckenridge" or "Plaintiff") filed this action for a declaratory judgment of non-infringement, tortious interference with business relationships, and unfair competition. Breckenridge seeks this relief from the patent holder, Metabolite Laboratories, Inc. ("Metabolite"), and the licensee for the patents, Pamlab, L.L.C. ("Pamlab"). The patents at issue in this case relate to the "method of treating or preventing elevated serum metabolite levels." Amended Complaint, ¶ 15. Through a license agreement with Metabolite, Pamlab manufactures and distributes a vitamin product known as FOLTX for treating or preventing elevated serum metabolite levels. Id., ¶ 16. Metabolite has no involvement in the manufacturing, marketing, or sales of FOLTX, other than it receives royalties and quarterly sales reports. See generally, Deposition of Robert H. Allen, M.D. [DE 67]. Breckenridge manufactures a similar product. On or about December 18, 2003, Metabolite and Pamlab filed a lawsuit in the United States District Court for the District of Colorado against Breckenridge asserting patent infringement. Id., ¶ 1. On or about December 23, 2003, the District Court denied Metabolite and Pamlab's motion for temporary restraining order. Id., ¶ 2. Metabolite and Pamlab voluntarily dismissed the action that same day. Id.

This dispute arose on or about January 13, 2004, when Metabolite sent 10-20 letters to vitamin distributors or retailers informing them of their vitamin-related patents and Pamlab's exclusive license. The letter also stated that:

one or more small generic drug companies are offering generic equivalents to FOLTX. As that patent owner, Metabolite wanted to alert you to the patent coverage on FOLTX. We would urge you to consult with your patent attorney before entering into any arrangements for the distribution, dispensing or substitution of these generic equivalents in place of a legitimate prescription or order for FOLTX.

See Exhibit A to Plaintiff's Response in Opposition to Defendant Metabolite's Motion to Dismiss Amended Complaint [DE 65] (hereinafter "Metabolite attorney letters"). Three (3) of these letters were sent to Florida businesses. Id. Breckenridge filed this lawsuit on January 29, 2004, within about eight (8) days of learning of these letters.

Metabolite initially moved to dismiss the complaint based upon a lack of personal jurisdiction [DE 12].¹ In response to the motion, Breckenridge sought, and obtained, leave of court to conduct jurisdictional discovery and to extend the time to respond to the motion to dismiss until June 14, 2004 [DE 21 and 24]. On June 14, 2004, Breckenridge moved for a further extension based upon the parties' discovery dispute [DE 35]. The Court granted the motion and set a response date for July 30, 2004 [DE 37]. On July 29, 2004, Breckenridge sought a third extension of time to respond to the motion to dismiss [DE 53]. The Court denied this motion, but allowed Breckenridge to respond to the motion by August 18, 2004 [DE 56]. On August 18, 2004, Breckenridge filed an Amended Complaint [DE 58]. Defendants then moved to strike the Amended Complaint and for the Court to decide the motion to dismiss the initial complaint [DE 59]. Breckenridge then sought and obtained leave to file an amended complaint [DE 60 and 61]. Metabolite then filed the present motion to dismiss the amended complaint for lack of personal jurisdiction [DE 62].

II. DISCUSSION

The determination of personal jurisdiction over a nonresident defendant requires a two-part analysis. When jurisdiction is based on a federal question arising under a statute that is silent regarding service of process, Rule 4(e) of the Federal Rules of Civil Procedure requires that both assertion of jurisdiction and service of process be determined by the state long-arm statute. Cable/Home Communication Corporation v. Network Productions, Inc., 902 F.2d 829, 855 (11th Cir.1990); Red Wing Shoe Co., Inc. v. Hockerson-Halberstadt, Inc., 148 F.3d 1355, 1358 (Fed.Cir.1998).² If there is a basis for the assertion of personal jurisdiction under the state statute, the Court must next determine whether sufficient minimum contacts exist to satisfy the Due Process Clause of the Fourteenth Amendment so that maintenance of the suit does not offend "traditional notions of fair play and substantial justice." International Shoe Co. v. Washington, 326 U.S. 310, 316, 66 S.Ct. 154, 90 L.Ed. 95 (1945). Only if both prongs of the Due Process analysis are satisfied may this Court exercise personal jurisdiction over a nonresident defendant. Robinson v. Giarmarco & Bill, P.C., 74 F.3d 253, 256 (11th Cir.1996) (citing Madara v. Hall, 916 F.2d 1510, 1514 (11th Cir.1990); International Shoe Co. v. Washington, 326 U.S. at 316, 66 S.Ct. 154).

When the district court does not conduct a discretionary evidentiary hearing on a motion to dismiss for lack of personal jurisdiction, the plaintiff must establish a prima facie case of personal jurisdiction over a nonresident defendant. A prima facie case is established if the plaintiff presents enough evidence to withstand a motion for directed verdict. The district court must accept the facts alleged in the complaint as true, to the extent they are uncontroverted by the defendant's affidavits. However, where the plaintiff's evidence and the defendant's affidavits conflict, the district court must construe all reasonable inferences in favor of the plaintiff. Robinson, 74 F.3d at 255 (11th Cir.1996) (citing Madara, 916 F.2d at 1514); accord, Venetian Salami Co. v. Parthenais, 554 So.2d 499 (Fla.1989).³

A. Florida Long-Arm Statute

Plaintiff's Amended Complaint asserts jurisdiction under Florida Statutes Section 48.193(1)(a), (1)(b), (1)(f) and (2). However, in response to Metabolite's motion to dismiss, Plaintiff asserts jurisdiction pursuant to § 48.193(1)(b) and (1)(f).⁴ Jurisdiction is proper in Florida if a person does any of the following acts:

(1)(a) operating, conducting, engaging in, or carrying on a business or business venture in this state or having an office or agency in this state.

(b) Committing a tortious act within this state.

. . .

(f) Causing injury to persons or property within this state arising out of an act or omission by the defendant outside this state, if, at or about the time of the injury, either:

1. The defendant was engaged in solicitation or service activities within this state;

. . .

(2) Engaged in substantial and not isolated activity within this state, whether such activity is wholly interstate, intrastate, or otherwise, is subject to the jurisdiction of the courts of this state, whether or not the claim arises from that activity.

1. Commission of Tort

Plaintiff asserts that the three letters that Metabolite caused to be sent to Florida distributors of Plaintiff's product were tortious, thus creating personal jurisdiction. Plaintiff relies upon Wendt v. Horowitz, 822 So.2d 1252, 1260 (Fla.2002), wherein the Florida Supreme Court stated that:

First, in order to "commit a tortious act" in Florida, a defendant's physical presence is not required. Second, "committing a tortious act" in Florida under section 48.193(1)(b) can occur through the nonresident defendant's telephonic, electronic, or written communications into Florida. However, the cause of action must arise from the communications. This predicate finding is necessary because of the connexity requirement contained in section 48.193(1).

In this case, this part of the test is met with respect to the tortious interference claim. However, the Florida Supreme Court also stated that the court must determine whether the allegations of the complaint state a cause of action. 822 So.2d at 1260. Whether a tort was committed necessarily involves a discussion of Metabolite's argument that their letters are protected communications under federal patent law and therefore not actionable as tortious interference under state law. The Court will address this issue within the due process analysis, infra.

2. Causing Injury Within Florida

Before addressing that issue, the Court first discusses whether Metabolite caused injury to Plaintiff while Metabolite engaged in solicitation activities in Florida. Each side focuses their argument on a particular section of the letters. If the Court only analyzed the last paragraph of the letters that alerts the Florida distributors to the existence of Metabolite's patents, it is true that this part of the letter does not contain a solicitation. See Metabolite Attorney Letters. However, the letter must be read as a whole. On the third paragraph of the two page letters,...