Logopaint A/S v. 3D Sport Signs SI

• Decision Date: 18 February 2016
• Docket Number: CIVIL ACTION NO. 15-04865
• Citation: 163 F.Supp.3d 260
• Parties: Logopaint A/S, Plaintiff, v. 3D Sport Signs SI, Carsten Jensen Charmig, Xavier Palmerola Fernandez, Jose Isabal Roca and Traffic Sports USA, Inc., Defendant.
• Court: U.S. District Court — Eastern District of Pennsylvania

163 F.Supp.3d 260

Logopaint A/S, Plaintiff,

v.3D Sport Signs SI, Carsten Jensen Charmig, Xavier Palmerola Fernandez, Jose Isabal Roca and Traffic Sports USA, Inc., Defendant.

CIVIL ACTION NO. 15-04865

United States District Court, E.D. Pennsylvania.

Signed February 18, 2016

Frederick A. Tecce, Panitch, Schwarze, Belisario and Nadel, LLP, Philadelphia, PA, Eric H. Weisblatt, Scott A. Felder, Wiley Rein LLP, Washington, DC, for Plaintiff.

Ethan Horwitz, Carlton Fields Jorden Burt LLP, New York, NY, Tracy Zurzolo Quinn, Reed Smith LLP, Philadelphia, PA, for Defendant.

MEMORANDUM

Pappert, District Judge.

Plaintiff LogoPaint A/S (“LogoPaint”) sued Defendants 3D Sport Signs SI (“3D Sport”), Carsten Jensen Charmig (“Charmig”), Xavier Palmerola Fernandez (“Fernandez”), Jose Isabal Roca (“Roca”) and Traffic Sports USA, Inc. (“Traffic Sports”) (collectively “Defendants”), alleging patent infringement under 35 U.S.C. § 271. Defendants move to transfer venue to the United States District Court for the Southern District of Florida pursuant to 28 U.S.C. § 1404(a). For the reasons that follow, Defendants' motion is granted.

I.

In April 2015, LogoPaint submitted a bid to supply Traffic Sports with its patented “3D CamCarpets” for use in the 2015 Gold Cup (“Gold Cup”).¹ (Compl. ¶ 16.) 3D CamCarpets provide a method for creating advertising by which two dimensional printed images appear three dimensional when seen on television. (Pl.'s Resp. to Def.'s Mot. to Transfer (“Pl.'s Resp.”) at 1, ECF No. 23.) The patent number for the 3D CamCarpets is Patent No. 8,261,475 (“the 475 patent”). (Compl. ¶ 2, Ex. A.) LogoPaint had previously licensed the 475 patent to 3D Sport, but only for use throughout Europe. (Id. ¶ 17.) 3D Sport submitted a competing bid to supply Traffic Sports with 3D advertising carpets for the Gold Cup. (Id. ¶¶ 18–19.) On July 7, 2015, Traffic Sports awarded 3D Sport the contract “to supply 3-D advertising carpets to the various games” of the Gold Cup. (Id. ¶ 18.) LogoPaint alleges that these goods infringe its 475 patent. (Id. ¶¶ 18–19.)

LogoPaint contends that 3D Sport directly infringed the 475 patent when it “made..., sold, offered for sale, and/or imported into the United States, including this Judicial District, 3-D advertising carpets.” (Id. ¶ 26.) LogoPaint also contends that Defendants induced and contributed to the infringement of the 475 patent by taking actions that encouraged and facilitated the infringement. (Id. ¶¶ 28–34.)

LogoPaint filed its complaint on August 27, 2015. (ECF No. 1.) Defendants filed their motion to transfer venue on October 21, 2015. (ECF No. 13.) LogoPaint filed its response on November 9, 2015 (ECF No. 23) and Defendants filed their reply on November 16, 2015. (ECF No. 26.)

II.

A district court “may transfer the venue of any civil action for the convenience of parties and witnesses or in the interests of justice, to any other district where it might have been brought.” Weber v. Basic Comfort Inc. , 155 F.Supp.2d 283, 284 (E.D.Pa.2001) (citing 28 U.S.C. § 1404(a) ). The purpose of § 1404(a) is “to prevent the waste ‘of time, energy and money’ and ‘to protect litigants, witnesses and the public against unnecessary inconvenience and expense.’ ” Van Dusen v. Barrack , 376 U.S. 612, 616, 84 S.Ct. 805, 11 L.Ed.2d 945 (1964) (quoting Cont'l Grain Co. v. The FBL – 585 , 364 U.S. 19, 26, 80 S.Ct. 1470, 4 L.Ed.2d 1540 (1960) ). District Courts are vested with “broad discretion” when determining whether transfer is appropriate. Jumara v. State Farm Ins. Co. , 55 F.3d 873, 883 (3d Cir.1995).

“In ruling on a motion to transfer, the Court should consider ‘all relevant factors to determine whether on balance the litigation would more conveniently proceed and the interests of justice be better served by transfer to a different forum.’ ” Weber , 155 F.Supp.2d at 284 (quoting Jumara , 55 F.3d at 879 (internal citations omitted)). The Court must first determine “whether venue would be proper in the transferee district.” Id. If this first prong is satisfied, “the court then should determine whether a transfer would be in the interests of justice.” Id. (citing Jumara , 55 F.3d at 879 ). The burden of establishing that transfer is appropriate rests with the moving party. See Shutte v. Armco Steel Corp. , 431 F.2d 22, 25 (3d Cir.1970).

LogoPaint is a Danish corporation with its principal place of business in Vejle, Denmark. (Compl. ¶ 6.) Traffic Sports is incorporated in Florida with its principal place of business in Miami, Florida. (Id. ¶ 7.) 3D Sport is a Spanish corporation with its principal place of business in Barcelona, Spain. (Id. ¶ 8.) The individual defendants, as officers of 3D Sport, are employed in 3D Sport's Barcelona office. (Id. ¶¶ 9–11.)

III.

The Court must first determine whether venue would be proper in the Southern District of Florida. In patent infringement cases, venue is proper “in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business.” 28 U.S.C. § 1400(b). Thus, the Southern District of Florida is an appropriate venue as it relates to Traffic Sports—which LogoPaint does not dispute. (See generally Pl.'s Resp.) For the remaining foreign Defendants, venue is proper in any district court assuming they are subject to personal jurisdiction in that forum. 28 U.S.C. § 1391(c)(3). LogoPaint contends that the Southern District of Florida lacks personal jurisdiction over the remaining foreign Defendants, rendering that venue inappropriate. (Pl.'s Resp. at 4–5.)

In patent infringement cases, Federal Circuit precedent controls issues concerning personal jurisdiction. See Grober v. Mako Products, Inc. , 686 F.3d 1335, 1345 (Fed.Cir.2012). Whether a district court has personal jurisdiction over the defendants in a patent infringement case is determined by: (1) whether jurisdiction exists under the state long-arm statute; and (2) if so, whether exercising jurisdiction is consistent with the limitations of the due process clause. Trintec Indus., Inc. v. Pedre Promotional Products, Inc. , 395 F.3d 1275, 1279 (Fed.Cir.2005).

Florida's long-arm statute confers personal jurisdiction over a defendant who commits a tortious act within the state, or commits “an act or omission” outside Florida that causes injury in the state. Fla. Stat. § 48.193(1)(b), (f). “Patent infringement constitutes a tortious act within the meaning of Florida's long-arm statute for the purposes of establishing personal jurisdiction.” Kemin Foods, L.C. v. Omniactive Health Techs., Inc. , 654 F.Supp.2d 1328, 1333 (M.D.Fla.2009). Additionally, the Federal Circuit has held that, “in patent infringement actions, a patentee's injury occurs where the product is sold.” TriStrata Tech., Inc. v. Emulgen Labs., Inc. , 537 F.Supp.2d 635, 640 (D.Del.2008) (citing Beverly Hills Fan Co. v. Royal Sovereign Corp. , 21 F.3d 1558, 1570 (Fed.Cir.1994) ). This is so because “[e]conomic loss occurs to the patent holder at the place where the infringing sale is made” and “the patent owner loses business there.” Beverly Hills Fan Co. , 21 F.3d at 1571. The patent owner realizes economic loss at the place of sale because “[t]he sale represents a loss in potential revenue through licensing or other arrangements.” Id.

LogoPaint contends that 3D Sport directly infringed its patent by making, offering for sale, selling and/or importing the infringing products into the United States. (Compl. ¶ 26.) It further alleges that 3D Sport's officers induced and contributed to the infringement of the 475 patent by taking actions that encouraged and facilitated the infringement. (Id. ¶¶ 28–34.) LogoPaint contends that the direct infringement occurred when the infringing products were displayed at two Gold Cup games in this District. (Pl.'s Resp. at 4–5.) Because no Gold Cup games were played in the Southern District of Florida, LogoPaint argues that no infringement occurred in that venue. (Id. )

Defendants, however, submitted an affidavit² from Fernan Zuluaga (“Zuluaga”), Director of International Business for Traffic Sports, stating that all negotiations, arrangements and sales between Traffic Sports and 3D Sport occurred in Miami. (Def.'s Mot. to Transfer (“Def.'s Mot.”) at Ex. 2.) Roca, 3D Sport's CEO, also submitted an affidavit stating that the negotiations and sale of the goods occurred in Miami, and that the goods were manufactured at 3D Sport's office in Barcelona. (Def.'s Mot. at Ex. 3.) Moreover, Roca indicated that no 3D Sport employees have ever been to Pennsylvania. (Id. ) LogoPaint has not alleged any facts refuting either affidavit. (See generally Pl.'s Resp.)

Given that “a patentee's injury occurs where the product is sold,” LogoPaint's claims arise out of actions that occurred in Florida, not Pennsylvania. TriStrata Tech. , 537 F.Supp.2d at 640 (citing Beverly Hills Fan Co. , 21 F.3d at 1570 ). 3D Sport and its officers negotiated the bid and sold the infringing products to Traffic Sports at its office in Miami. While the products themselves were used at two games in this District, the “[e]conomic loss occur[ed]...where the infringing sale [was] made because the patent owner los[t] business there.” Beverly Hills Fan Co. , 21 F.3d at 1571. Florida's long-arm statute therefore confers personal jurisdiction over 3D Sport and its officers.

The Court must next analyze whether the exercise of jurisdiction by the Southern District of Florida would be consistent with the limitations of the due process clause. See Trintec Indus., Inc. , 395 F.3d at 1279. “To determine whether jurisdiction over an out-of-state defendant comports with due process, we look to whether (1) the defendant purposefully directed its activities at residents of the forum state, (2) the claim arises out of or relates to the defendant's activities with the forum state, and (3) assertion of personal jurisdiction is reasonable and fair.” Elecs. For Imaging, Inc. v. Coyle , 340 F.3d 1344,...