Talus Corp. v. Browne, Civ. No. 91-0167-P.

• Decision Date: 03 October 1991
• Docket Number: Civ. No. 91-0167-P.
• Citation: 775 F. Supp. 23
• Parties: TALUS CORPORATION, Plaintiff, v. Donald V. BROWNE, Defendant.
• Court: U.S. District Court — District of Maine

775 F. Supp. 23

TALUS CORPORATION, Plaintiff, v. Donald V. BROWNE, Defendant.

Civ. No. 91-0167-P.

United States District Court, D. Maine.

October 3, 1991.

James G. Goggin, Verrill & Dana, Portland, Me., for plaintiff Talus Corp.

John H. Rich III, Perkins, Thompson, Hinckley & Keddy, Portland, Me., Gregory V. Novak, Coffee-Novak, Lubbock, Tex., for defendant Donald V. Browne.

MEMORANDUM OF DECISION AND ORDER GRANTING DEFENDANT'S MOTION TO DISMISS

GENE CARTER, Chief Judge.

In this patent invalidity and noninfringement action, Defendant, owner of a patent allegedly infringed upon by Plaintiff, has moved to dismiss Plaintiff's Complaint for lack of in personam jurisdiction under Federal Rule of Civil Procedure 12(b)(2) and improper venue under Federal Rule of Civil Procedure 12(b)(3). Alternatively, Defendant seeks transfer of venue pursuant to 28 U.S.C. section 1404 if his motion to dismiss is denied by this Court. Jurisdiction of the Court arises under the Federal Declaratory Judgements Act, 28 U.S.C. §§ 2201 and 2202, 28 U.S.C. § 1332; federal patent law, 28 U.S.C. § 1338; and pendent jurisdiction, 35 U.S.C. § 271. For the reasons that follow, the Court will grant the motion to dismiss on the basis of lack of in personam jurisdiction.

I. In Personam Jurisdiction

When a defendant makes a motion under Rule 12(b)(2), the plaintiff has the burden of proving that in personam jurisdiction exists in the court. Kowalski v. Doherty, Wallace, Pillsbury & Murphy, Attorneys at Law, 787 F.2d 7, 9-10 (1st Cir.1986). According to the Court of Appeals for the First Circuit, "if the plaintiff makes a prima facie showing of jurisdiction supported by specific facts alleged in the pleadings, affidavits, and exhibits, its burden is met." Ealing Corp. v. Harrods, Ltd., 790 F.2d 978, 979 (1st Cir.1986) (citations omitted).

The Court's exercise of in personam jurisdiction over a defendant in a nondiversity case "is limited by the scope of the process available to the Court." Merrill v. Zapata Gulf Marine Corp., 667 F.Supp. 37, 39 (D.Me.1987). As this Court has noted:

Before a court may exercise personal jurisdiction over a defendant, there must be more than notice to the defendant and a constitutionally sufficient relationship between the defendant and the forum. There must also be a basis for the defendant's amenability to service of summons. Absent consent, this means there must be authorization for service of summons on the defendant.... Under Rule 4(e), a federal court normally looks either to a federal statute or to the long-arm statute of the State in which it sits to determine whether a defendant is amenable to service, a prerequisite to its exercise of personal jurisdiction.

Sparkowich v. American Steamship Owner's Mutual Protection and Indemnity Association, 687 F.Supp. 695, 698 (D.Me. 1988) (quoting in part Omni Capitol International v. Rudolf Wolff & Co., Ltd., 484 U.S. 97, 108 S.Ct. 404, 98 L.Ed.2d 415 (1987)).

This Court also noted that "the only situation in which the assertion of nondiversity personal jurisdiction is not governed by the local long-arm statute occurs when Congress has specifically authorized statutory nationwide service of process." Id. Service of process for patent infringement acts is covered under 28 U.S.C. section 1694, which states that:

In a patent infringement action commenced in a district where the defendant is not a resident but has a regular and established place of business, service of process, summons or subpoena upon such defendant may be made upon his agent or agents conducting such business.

Courts have interpreted the statute's standard of a "regular and established place of business." See, e.g., Shelton v. Schwartz, 131 F.2d 805, 808-09 (7th Cir.1942) (office in district through which defendant maintained salesmen and representatives, who solicited orders and carried on a continuous, substantial business was a "regular and established place of business"); Ruddies v. Auburn Spark Plug Co., 261 F.Supp. 648, 654 (S.D.N.Y.1966) ("It must appear that a defendant is regularly engaged in carrying on a substantial part of its ordinary business on a permanent basis in a physical location within the district over which it exercises some measure of control.") (quoting Mastantuono v. Jacobsen Manufacturing Co., 184 F.Supp. 178, 180 (S.D.N.Y.1960)).

Title 28 U.S.C. section 1694, however, is not an exclusive provision for service of process in patent infringement cases. "The service of process provisions of Rule 4 of the Federal Rules of Civil Procedure are also available to a plaintiff in a patent infringement suit." Ruddies, 261 F.Supp. at 655. See also Werner Machinery Co. v. National Cooperatives, Inc., 289 F.Supp. 962 (E.D.Wis.1968) ("28 U.S.C. § 1694 is not exclusive, and the plaintiff may also effect service pursuant to Rule 4"). Under Rule 4, "the Court has personal jurisdiction over Defendant only if Defendant is amenable to service under the Maine long-arm statute." Merrill, 667 F.Supp. at 40.

The Court's exercise of in personam jurisdiction under Rule 4 must be consistent with Maine's long-arm statute and the Due Process Clause of the Fourteenth Amendment to the United States Constitution. Id. See also Electronic Media International v. Pioneer Communications of America, Inc., 586 A.2d 1256, 1258 (Me.1991). Under the Fourteenth Amendment, the Court must ask "whether the defendant purposefully established `minimum contacts' in the forum State," Burger King Corp. v. Rudzewicz, 471 U.S. 462, 474, 105 S.Ct. 2174, 2183, 85 L.Ed.2d 528 (1985), and whether "the defendant's conduct and connection with the forum State are such that he should reasonably anticipate being haled into court there." Id. (quoting World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286, 297, 100 S.Ct. 559, 567, 62 L.Ed.2d 490 (1980)).

In order for this Court to exercise specific jurisdiction over Defendant, "the claim or cause of action must arise out of or be related to a defendant's forum contacts and the defendant must have purposefully directed his activities at residents in the forum state." Smirz v. Fred C. Gloeckner & Co., 732 F.Supp. 1205, 1207 (D.Me.1990) (citing Burger King, 471 U.S. at 472-75, 105 S.Ct. at 2181-84). The Maine long-arm statute provides for the exercise of specific jurisdiction; that is, it states that "only causes of action arising from acts enumerated herein may be asserted against a defendant in an action in which jurisdiction over him is based upon this section." Me.Rev.Stat.Ann. tit. 14, § 704-A(2), (4) (1980). Alternatively, this Court may subject Defendant to general in personam jurisdiction "if the controversy is unrelated to a defendant's contacts with the forum ... and defendant's contacts with the forum are continuous and substantial." Sandstrom v. Chemlawn Corp., 727 F.Supp. 676, 682 (D.Me.1989), aff'd, 904 F.2d 83 (1st Cir.1990) (citations omitted).

Plaintiff claims that Maine's long-arm statute subjects Defendant to the in personam jurisdiction of this Court. Plaintiff's Memorandum in opposition to Defendant's Motion to Dismiss and/or Transfer (hereinafter "Plaintiff's Memorandum") at 3-5. Specifically, Plaintiff claims that Defendant's conduct in sending a letter to Plaintiff in Maine and to Plaintiff's counsel in Massachusetts falls within the statute's provision that subjects any person "causing a tortious act to be done, or causing the consequences of a tortious act to occur ... (within Maine)" to the jurisdiction of Maine's courts. Me.Rev.Stat.Ann. tit. 14, § 704-A(2)(B) (1980). Plaintiff argues that "when a patent owner deliberately sends letters threatening infringement into a forum which adversely affect a manufacturer's business there, the allegedly tortious acts in the sending of such letters are acts committed in that forum, sufficient to subject the patent owner to personal jurisdiction in the forum." Plaintiff's Memorandum at 4.

According to the record, Defendant sent correspondence to Plaintiff in Maine on or about December 13, 1990, informing Plaintiff of Defendant's United States Patent Number 4,757,928 (hereinafter "'928"). See Plaintiff's Memorandum at 2; Defendant's Memorandum of Law in Support of Dismissal Pursuant to Rules 12(b)(2) and 12(b)(3) or in the Alternate, Transfer of Venue Pursuant to 28 U.S.C. § 1404 (hereinafter "Defendant's Memorandum I"), Exhibit "B." Subsequently, a stream of correspondence occurred between Plaintiff and Defendant's counsel, dated January 9, 17 and 31, 1991; February 5, 1991; and, finally, a letter dated April 29, 1991 by Defendant directed to Plaintiff's attorneys in Massachusetts, again notifying Plaintiff of its infringing the '928 patent, and demanding that Plaintiff and its customers immediately cease and desist in their sales of TRASH STASH litter bags. See Defendant's Memorandum II, Exhibit "C." Plaintiff then filed its Complaint for declaratory relief on or about May 15, 1991.

Defendant argues that its conduct does not fall within Maine's long-arm statute because the sending of notice letters does not constitute a tort. Defendant's Memorandum in Reply to Plaintiff's Memorandum in Opposition Dated August 8, 1991 (hereinafter "Defendant's Memorandum II") at 3. Defendant also argues that its isolated contact with the forum state is insufficient to establish minimum contacts under the due process analysis. Defendant concludes that its contacts with Maine are "so tenuous that it would offend `traditional notions of fair play and substantial justice' for this Court to exercise personal jurisdiction over him." Id.

II. Discussion

A.

Plaintiff has failed to meet its burden. First, it has failed to show that service of process on Defendant under 28 U.S.C. section 1694 is appropriate. Plaintiff proffers no evidence that Defendant had a "regular and established place of business" in the District of Maine. The extent of its contacts with the district consisted of an initial notice-of-infringement letter to Plaint...