Columbia Sportswear N. Am., Inc. v. Accessories
| Decision Date | 29 June 2015 |
| Docket Number | No. 3:15-cv-00064-HZ,3:15-cv-00064-HZ |
| Parties | COLUMBIA SPORTSWEAR NORTH AMERICA, INC., an Oregon corporation, Plaintiff, v. SEIRUS INNOVATIVE ACCESSORIES, a Utah corporation, Defendant. |
| Court | U.S. District Court — District of Oregon |
Devon Zastrow Newman
David W. Axelrod
Schwabe Williamson & Wyatt, PC
1211 SW Fifth Avenue, Ste. 1800
Portland, OR 97204
Attorneys for Plaintiff
Eric M. Jaegers
Troutman Sanders LLP
11682 El Camino Real, Ste. 400
San Diego, CA 92130
Matthew D. Murphey
Troutman Sanders LLP
Irvine, CA 92614
Paul E. McGowan
Troutman Sanders LLP
600 Peachtree St. NE, Ste. 5200
Atlanta, GA 30308
Lisa D. Hardie
Troutman Sanders LLC
Portland, OR 97205
Attorneys for Defendant
Plaintiff, Columbia Sportswear North America, Inc. ("Columbia"), alleges that Defendant Seirus Innovative Accessories, Inc. ("Seirus"), a Utah corporation with a principal place of business in California, has infringed Columbia's patents related to a heat reflective lining for outdoor sporting gear. Currently before the Court is Seirus's motion to dismiss for lack of personal jurisdiction, or alternatively, to transfer venue to the Southern District of California. The Court has personal jurisdiction over Seirus because it intentionally targeted the forum by selling allegedly infringing products directly to Oregon retailers. Also, since the multi-factor analysis which guides the Court's decision to transfer venue is essentially balanced between the parties, the Court defers to Columbia's choice of venue. Accordingly, Seirus's motion is denied.
Columbia is a Portland, Oregon based outdoor company with more than $2.1 billion in global annual sales. Plaintiff's Response to Motion to Dismiss/Transfer Venue ("Pl. Resp.") at 3. Columbia owns and controls U.S. Patent Nos. D657,093 (" '093 patent"), 8,424,119 (" '119 patent), and 8,453,270 (" '270 patent"). Complaint ("Compl.") ¶ 2. Collectively, those patents protect Columbia's Omni-Heat technology, a heat reflective material that retains body heat but allows for breathability and moisture wicking. Compl. ¶ 2. The Omni-Heat material is used as a lining in a variety of outdoor gear such as jackets, shirts, gloves, and more. Compl. ¶ 2.
Seirus is a Utah corporation with a principal place of business in Poway, California. Compl. ¶ 5. Seirus sells its own brand of cold weather gear, including gloves and glove liners with a breathable, heat reflective material it calls HEATWAVE. Compl. ¶¶ 20-21. Columbia alleges that Seirus's HEATWAVE product infringes its Omni-Heat patents, and that Columbia purchased gloves featuring Seirus's HEATWAVE product at various stores in Oregon. Complat ¶¶ 25, 26-47.
Before it could substantiate Seirus's products were available for purchase in Oregon, Columbia filed a patent infringement action against Seirus in December, 2013, in the Western District of Washington. Compl. ¶ 9. Seirus filed a similar motion to dismiss for lack of personal jurisdiction because, it argued, it lacked any meaningful contacts with the forum. Defendant's Memorandum in Support of Motion to Dismiss ("Def. Memo."), at 8. Columbia sought leave to conduct jurisdictional discovery, but the court denied the motion and ordered Columbia to respond to Seirus's motion to dismiss or transfer venue. Compl. ¶ 13. In the interim, Columbia confirmed that Seirus's HEATWAVE products were available in Oregon. Compl. ¶ 12. Since Seirus had yet to file an answer in the Washington case, Columbia promptly filed a notice ofdismissal under Federal Rule of Civil Procedure ("Rule") 41(a), and subsequently filed the instant action in the District of Oregon. Compl. ¶ 15-16.
Seirus now moves to dismiss for lack of personal jurisdiction because it lacks the "minimum contacts" with Oregon required to support a constitutional exercise of this Court's personal jurisdiction over it. Alternatively, Seirus seeks to transfer this case to the Southern District of California because it is a more convenient forum.
Federal Circuit law, rather than regional circuit law, determines whether a district court has personal jurisdiction over the defendant in a patent infringement case. Avocent Huntsville Corp. v. Aten Intern. Co. Ltd., 552 F.3d 1324, 1328 (Fed. Cir. 2008). If the parties have not conducted discovery, the plaintiff need only make a prima facie showing that the defendant is subject to personal jurisdiction. Silent Drive, Inc. v. Strong Indus., Inc., 326 F.3d 1194, 1201 (Fed. Cir. 2003). In evaluating a Rule 12(b)(2) motion to dismiss for lack of personal jurisdiction without holding an evidentiary hearing, the court construes the pleadings and affidavits in the light most favorable to the non-moving party. Graphics Controls Corp. v. Utah Med. Products, Inc., 149 F.3d 1382, 1383 n.1 (Fed. Cir. 1998).
Personal jurisdiction over an out-of-state defendant in a patent-related dispute involves two questions: whether jurisdiction exists under the forum state's long-arm statute, and if so, whether asserting personal jurisdiction is consistent with the limitations of the Due Process Clause of the federal Constitution. Trintec Indus., Inc. v. Pedre Promotional Products, Inc., 395 F.3d 1275, 1279 (Fed. Cir. 2005). These inquiries essentially merge because Oregon's long-arm statute extends jurisdiction to the outer limits of due process. Invellop, LLC v. Bovino, No. 3:14-cv-00033-SI, 2014 WL 3478866, at *2 (D. Or. July 11, 2014); see also Trintec, 395 F.3d at 1279("collaps[ing]" the two-part inquiry where a state's long arm statute is coextensive with the limits of due process).
The Due Process Clause "protects an individual's liberty interest in not being subject to the binding judgments of a forum with which he has established no meaningful contacts, ties, or relations." Burger King Corp. v. Rudzewicz, 471 U.S. 462, 471-72 (1985) (internal quotation marks and citation omitted). To satisfy this due process protection, the plaintiff must show that the defendant has "certain minimum contacts with [the forum state] such that the maintenance of the suit does not offend traditional notions of fair play and substantial justice." Int'l Shoe Co. v. Washington, 326 U.S. 310, 316 (1945). "The requirement for purposeful minimum contacts helps ensure that non-residents have fair warning that a particular activity may subject them to litigation in the forum." Beverly Hills Fan Co. v. Royal Sovereign Corp., 21 F.3d 1558, 1565 (Fed. Cir. 1994) (citations omitted).
"Under the 'minimum contacts' test, a defendant may be subject to either specific jurisdiction or general jurisdiction." LSI Indus. Inc. v. Hubbell Lighting, Inc., 232 F.3d 1369, 1375 (Fed.Cir. 2000). A court has general jurisdiction over a nonresident defendant when that defendant has "continuous and systematic" contacts with the forum state. Helicopteros Nacionales de Colombia, S.A. v. Hall, 466 U.S. 408, 416 (1984). A court has specific jurisdiction where "the defendant has purposefully directed his activities at residents of the forum, and the litigation results from alleged injuries that arise out of or relate to those activities." Burger King, 471 U.S. at 472 (internal quotation marks and citations omitted); see also Beverly Hills Fan Co., 21 F.3d at 1563 n.10 (citation omitted). Thus, in "contrast to general, all-purpose jurisdiction, specific jurisdiction is confined to adjudication of issues deriving from, or connected with, the very controversy that establishes jurisdiction." Goodyear Dunlop TiresOperations, S.A. v. Brown, 131 S. Ct. 2846, 2851 (2011) (internal quotation marks and citation omitted).
A district court can exercise specific personal jurisdiction over a defendant subject to a three-part test. First, the defendant must have purposefully directed its activities at residents of the forum. Second, the plaintiff's claim must arise out of or relate to those activities. And third, the exercise of personal jurisdiction must be reasonable and fair. Autogenomics, Inc. v. Oxford Gene Tech. Ltd., 566 F.3d 1012, 1018 (Fed. Cir. 2009) (citing Breckenridge Pharm., Inc. v. Metabolite Labs, Inc., 444 F.3d 1356, 1363 (Fed. Cir. 2006)). Under this test, a court may properly assert specific jurisdiction "even if the contacts are isolated and sporadic," so long as the cause of action arises out of or relates to those contacts. Silent Drive, Inc. v. Strong Indus., Inc., 326 F.3d 1194, 1200 (Fed. Cir. 2003) (citing Burger King, 471 U.S. at 472-73). The plaintiff bears the burden at step one and two, but the burden shifts to the defendant at step three to prove that personal jurisdiction is unreasonable. Grober v. Mako Prods., Inc., 686 F.3d 1335, 1346 (Fed. Cir. 2012).
"For the convenience of parties and witnesses, in the interest of justice, a district court may transfer any civil action to any other district or division where it might have been brought." 28 U.S.C. § 1404(a). In determining whether transfer is proper, the Federal Circuit applies regional circuit law. In re Link_A_Media Devices Corp., 662 F.3d 1221, 1222-23 (Fed. Cir. 2011). For purposes of adjudicating a Rule 12(b)(3) motion, the court resolves factual conflicts and draws all reasonable inferences in favor of the non-moving party. Benchmade Knife Co. v. Benson, No. CIV. 08-967-HA, 2010 WL 988465, at *4 (D. Or. Mar. 15, 2010) (citing Murphy v. Schneider National, Inc., 362 F.3d 1133, 1138 (9th Cir. 2004)).
Columbia concedes that Seirus is not subject to general jurisdiction in this district. Instead, Columbia relies on specific jurisdiction and argues that Seirus has "directed its commercial activities to Oregon," through both direct sales of infringing and other products in the state and its sales to national vendors with outlets in Oregon. Pl. Resp. at 11-12.
Seirus admits it first sold an accused HEATWAVE product directly to an Oregon retailer in December...
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