Gor-Vue Corp. v. Hornell Elektrooptik AB

• Citation: 634 F. Supp. 535
• Decision Date: 09 January 1986
• Docket Number: No. C84-2805.,C84-2805.
• Parties: GOR-VUE CORPORATION, et al, Plaintiffs, v. HORNELL ELEKTROOPTIK AB, et al., Defendants.
• Court: U.S. District Court — Northern District of Ohio

634 F. Supp. 535

GOR-VUE CORPORATION, et al, Plaintiffs, v. HORNELL ELEKTROOPTIK AB, et al., Defendants.

No. C84-2805.

United States District Court, N.D. Ohio, E.D.

January 9, 1986.

Christopher B. Fagan, Fay, Sharpe, Fagan, Minnich & McKee, Cleveland, Ohio, for plaintiffs.

Richard J. McGrath, Morgan, Finnegan, Pine, Foley & Lee, New York City, Don W. Bulson, Maky, Renner, Otto & Boiselle, Cleveland, Ohio, for defendants.

MEMORANDUM OPINION AND ORDER

BATTISTI, Chief Judge.

This lawsuit grows out of an alleged patent infringement. The product involved is a specially designed welding helmet and eye piece control. Plaintiff Gor-Vue Corporation, an Ohio corporation, holds an exclusive license to the patent involved. Plaintiff Mack Gordon, an Ohio resident, holds all right and title to and interest in this patent.

On November 2, 1984, the defendants, a Swedish corporation and its Swedish owner ("Hornell"), moved the Court to dismiss the complaint in this case, pursuant to Fed.R. Civ.P. 12(b)(2), for lack of in personam jurisdiction over the defendants. On July 25, 1985, plaintiffs responded with a Brief in Opposition with Exhibits. On August 28, 1985, defendants again filed with the Court, this time a Reply Brief in Support of Defendants' Motion to Dismiss Pursuant to Rule 12(b)(2), Fed.R.Civ.P. Plaintiffs countered with a Motion for Leave to File Responsive Brief, which plaintiffs filed with an accompanying Responsive Brief on October 9, 1985. Yet a final brief on the matter of in personam jurisdiction was filed by defendants on October 29, 1985, which was captioned Defendants' Opposition to Plaintiffs' Responsive Brief in re Defendants' Motion to Dismiss.¹

The Court agrees with the statement which the defendants made in their last filing on this matter: "Clearly, the briefing of this Motion to Dismiss has got to end at some point." Id. at 2. Upon due consideration of the numerous briefs and arguments submitted to the Court on the matter of in personam jurisdiction, the Court hereby denies defendants' Motion to Dismiss for lack of in personam jurisdiction under Fed.R.Civ.P. 12(b)(2).

I.

Although patent infringement cases are grounded in federal law and are thus candidates for federal statutes governing jurisdiction, Congress has chosen not to give the federal courts general direction in this area. As a result, the federal courts look to the law of the state in which the district is located to determine whether jurisdiction may be asserted over an out-of-state defendant. Graham Engineering Corp. v. Kemp Products Ltd., 418 F.Supp. 915, 919-20 (N.D. Ohio 1976). Although an inquiry into in personam jurisdiction of a foreign corporation based on national contacts with the United States as a whole, such as that outlined by the Court in Edward J. Moriarty & Co. v. General Tire & Rubber Co., 289 F.Supp. 381, 389-90 (S.D. Ohio 1967), might be desirable to a plaintiff seeking a convenient forum, the Court's inquiry must be limited under current law to contacts with the forum state, Ohio.

The Court is directed under Fed.R. Civ.P. 4(e) to look to Ohio statutes for the appropriate provisions which outline in personam jurisdiction. Rule 4(e) in relevant part provides:

Whenever a statute or rule of court of the state in which the district court is held provides (1) for service of a summons, or of a notice, or of an order in lieu of summons upon a party not an inhabitant of or found within the state, ... service may ... be made under the circumstances and in the manner prescribed in the statute or rule.

The relevant Ohio statute under which plaintiffs argue that the Court has personal jurisdiction over defendants is O.R.C. § 2307.382, the Ohio long-arm statute. Plaintiffs point specifically to §§ 2307.382(A)(3) and (B),² which provide:

(A) A court may exercise personal jurisdiction over a person who acts directly or by an agent, as to a cause of action arising from the person's:

* * * * * *

(3) Causing tortious injury by an act or omission in this state;

* * * * * *

(B) When jurisdiction over a person is based solely upon this section, only a cause of action arising from acts enumerated in this section may be asserted against him.

The tort which defendants allegedly commit is based both on statutory and case law relevant to patent infringements. Title 35 U.S.C., §§ 271(a) and (b) provide:

(a) Except as otherwise provided in this title, whoever without authority makes, uses or sells any patented invention, within the United States during the term of the patent therefor, infringes the patent.

(b) Whoever actively induces infringement of a patent shall be liable as an infringer.

The courts have found these statutory provisions to establish a cause of action sounding in tort. See, e.g., Honeywell, Inc. v. Metz Apparatewerke, 509 F.2d 1137 (7th Cir.1975). As the Supreme Court noted in Carbice Corporation of America v. American Patents Development Corporation, 283 U.S. 27, 33, 51 S.Ct. 334, 336, 75 L.Ed. 819 (1931), "Infringement, whether direct or contributory, is essentially a tort, and implies invasion of some right of the patentee." There is no law in Ohio that is to the contrary. Indeed, Ohio courts seem to be quite willing to give a broad definition to tortious conduct. See, e.g., Poindexter v. Willis, 51 Ohio Op.2d 157, 23 Ohio Misc. 199, 256 N.E.2d 254, 256 and 260 (1970) (language concerning tortious conduct in a state's long-arm statute should not be confined to traditional concepts of a tort).

Section 2307.382(A)(3) of the Ohio long-arm statute has been interpreted to require a tortious occurrence where the causing act or omission as well as the resulting tortious injury occur in Ohio. This act or omission establishes the defendant's contact with Ohio, and it is out of this contact that the cause of action must arise. Busch v. Service Plastics, Inc., 261 F.Supp. 136, 140 (N.D. Ohio 1966).

Plaintiffs allege tortious conduct on the part of defendants in the form of patent infringement and/or inducement of others to infringe the patent in question. According to the plaintiffs, such infringement or inducement occurs in Ohio in a number of ways, including through the sale of the Hornell product and its advertising in Ohio, both of which are carried out through an exclusive distributorship.³ Out of these contacts with Ohio grows this lawsuit for alleged patent infringement. Since plaintiffs carry on their business in Ohio, their alleged injury is obviously being suffered in this state.

II.

Concluding that a defendant falls within the scope of Ohio's long-arm statute does not end the analysis of in personam jurisdiction. The Court cannot exercise personal jurisdiction over defendants if to do so violates fundamental notions of fairness as incorporated in Fifth Amendment due process requirements.⁴ In other words, as the Supreme Court stated in the landmark case of International Shoe Co. v. Washington, 326 U.S. 310, 316, 66 S.Ct. 154, 158, 90 L.Ed. 95 (1945), the constitutional requirements of due process require that a defendant "have certain minimum contacts with the forum such that the maintenance of the suit does not offend `traditional notions of fair play and substantial justice.'" (Quoting Milliken v. Meyer, 311 U.S. 457, 463, 61 S.Ct. 339, 343, 85 L.Ed. 278 (1940).) In this way, in personam jurisdiction must be examined against both state statutory and federal constitutional standards. See Max Daetwyler Corp. v. R. Meyer, 762 F.2d 290, 293 (3rd Cir.1985) ("we are here presented with an issue where statutory and constitutional considerations are intertwined"). Satisfying the one does not necessarily satisfy the other.

Practically every court that has ever decided questions of in personam jurisdiction under a theory of minimum contacts has, at one time or another, grappled with notions such as convenience to the parties, International Shoe Co., supra, 326 U.S. at 317, 66 S.Ct. at 158; Honeywell, Inc., supra, at 1145, the defendant's purposeful enjoyment of the protection of local laws, Engineered Sports Products v. Brunswick Corp., 362 F.Supp. 722, 728 (D.Utah 1973), the foreseeability of the defendant's being haled into the particular forum, World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286, 297, 100 S.Ct. 559, 567, 62 L.Ed.2d 490 (1980), or simply the relationship among the defendant, the litigation, and the forum, Shaffer v. Heitner, 433 U.S. 186, 209, 97 S.Ct. 2569, 2582, 53 L.Ed.2d 683 (1977). All of these "standards" constitute elements of the flexible due process test announced in International Shoe and its progeny: "Whether due process is satisfied must depend rather upon the quality and nature of the activity in relation to the fair and orderly administration of the laws which it was the purpose of the due process clause to insure." 326 U.S. at 319, 66 S.Ct. at 160.

Upon examination of the record in this case, the Court concludes that defendants have minimum contacts with Ohio to satisfy the constitutional due process requirements. Convenience to the parties involved in this lawsuit is not likely to be a matter of great importance. Since plaintiffs are Ohio residents, Ohio is the more convenient state for them. Defendants believe that Pennsylvania, the state of Hornell's U.S. distributor, is the preferable forum; plaintiffs have rejected this forum for a number of reasons. Obviously the difference between Ohio and Pennsylvania is not great. For defendants, the factor of inconvenience is minimal, since travel to the United States to defend in the federal courts is necessary in either case.

Defendants enjoy to a certain extent the protection of Ohio laws. For example, Hornell markets its products through trade journals that reach Ohio customers, and the Ohio trademark laws presumably protect Hornell in such advertising. The conduct alone of marketing a product in Ohio and reaching out to Ohio customers causes the product to be protected to a certain extent by the various business laws of the...