Tube-Mac Indus., Inc. v. Campbell, 2:19-cv-01192-RJC

CourtU.S. District Court — Western District of Pennsylvania
Writing for the CourtJudge Robert J. Colville
PartiesTUBE-MAC INDUSTRIES, INC., GARY MACKAY, and DAN HEWSON, Plaintiffs, v. STEVE CAMPBELL and TRANZGAZ, INC., Defendants
Decision Date20 April 2020
Docket Number2:19-cv-01192-RJC

TUBE-MAC INDUSTRIES, INC., GARY MACKAY,
and DAN HEWSON, Plaintiffs,
v.
STEVE CAMPBELL and TRANZGAZ, INC., Defendants

2:19-cv-01192-RJC

UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF PENNSYLVANIA

April 20, 2020


Judge Robert J. Colville

OPINION

Robert J. Colville, United States District Court Judge.

Before the Court is the "Motion for Dismissal for Want of Jurisdiction and Lack of Consent in an Improper Forum" (ECF No. 49) filed by Defendant Steven Campbell ("Campbell"). Campbell asserts that this Court does not have personal jurisdiction over Campbell, and that the Western District of Pennsylvania is an improper forum for resolution of Plaintiffs' claims. This matter has been fully briefed and is now ripe for consideration.

I. Factual Background

Plaintiffs brought the instant action seeking correction of inventorship of United States Patent No. 9,376,049 B2 ("the '049 Patent"). The '049 Patent was issued on June 28, 2016, and is titled "Method of Fabricating Type 4 Cylinders and Arranging in Transportation Housings for Transport of Gaseous Fluids." Am. Compl. ¶ 10, ECF No. 11. The '049 Patent identifies Campbell as the sole inventor of the system set forth in the '049 Patent. Am. Compl. Ex. 1, ECF No. 11-1. The '049 Patent contains fifteen claims, with Claim 1 being the only independent claim. Am. Compl. ¶ 14. Claim 1 provides as follows:

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1. A lightweight intermodal container or road trailer based system for transporting refrigerated gaseous fluids, comprising:

an enclosed and insulated transportation housing; a plurality of low-temperature resistant pressure vessels at least three feet in diameter secured within said transportation housing for containing said gaseous fluids, each of said pressure vessels including a body portion and opposing domed end portions attached to said body portion, each of said domed end portions having a wall thickness that is greater than a wall thickness of said body portion and an opening; and

at least one port boss affixed to each of said domed end portions, said at least one port boss including an inner component and an outer component, said inner component including an inner pipe and an inner plate transversely extending from said inner pipe, and said outer component including an outer pipe and an outer plate transversely extending from said outer pipe, wherein said inner pipe is inserted through said opening in each of said domed end portions and through said outer pipe such that said inner component and said outer component are compressed together to cause said inner plate to engage an inner surface of a respective one of said domed end portions and said outer plate to engage an outer surface of said respective one of said domed end portions to affix said at least one port boss to each of said domed end portions.

Am. Compl. ¶ 14 (emphasis added).

Plaintiffs Tube-Mac Industries, Inc., Gary Mackay, and Dan Hewson (collectively, "Plaintiffs") allege that Campbell did not solely invent the "port boss" referenced in Claim 1. Am. Compl. ¶ 15. Plaintiffs allege that Plaintiffs Gary Mackay ("Mackay") and Dan Hewson ("Hewson") conceived of and then demonstrated to Campbell the compression method discussed in Claim 1. Id. Plaintiffs further allege that, in 2007, Campbell vocalized a concern to Mackay and Hewson with respect to the seal achieved by the then existing port boss and the fiberglass vessel used to store and transport compressed gas, and that Campbell asked Mackay and Hewson if they could help solve this issue. Id. at ¶ 16. Plaintiffs allege that Mackay and Hewson designed and made a new port boss, showed the port boss to Campbell, and demonstrated to Campbell how the new port boss could be connected to the fiberglass vessel. Am. Compl. ¶¶ 17-18. Plaintiffs further allege that Figures 5-7 of the '049 Patent are drawings of the port boss that was created by

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Mackay and Hewson in response to Campbell's request. Id. at ¶ 20. Plaintiffs aver that, for these reasons, Mackay and Campbell are joint inventors of the system claimed in the '049 Patent. Id. at ¶ 22. Plaintiffs allege that Plaintiffs asked Campbell to add Mackay and Hewson as co-inventors of the '049 Patent, but that Campbell refused to do so. Id. at ¶ 28.

Plaintiff Tube-Mac Industries, Inc. ("Tube-Mac") is a Pennsylvania corporation having an address at 420 Halstead Blvd., Zelienople, PA 16063. Am. Compl. ¶ 2. Tube-Mac manufactures and sells pipe couplings, and Plaintiffs allege that Tube-Mac has the ability to manufacture the port boss purportedly created by Mackay and Hewson as well as the system for transporting gaseous fluids set forth in the '049 Patent. Id. at ¶ 24. Plaintiffs allege that Tube-Mac has had, and continues to have, opportunities to manufacture the port boss allegedly create by Mackay and Hewson for use in the system claimed in the '049 Patent, but cannot pursue these opportunities because it is barred by the '049 Patent from doing so. Id. at ¶ 25. Plaintiffs further allege that Mackay and Hewson have an obligation to assign their patent rights in the port boss and the system claimed by the '049 Patent to Tube-Mac, and that none of the Plaintiffs have assigned those patent rights to Campbell or to Defendant Tranzgaz, Inc. ("Tranzgaz"). Am. Compl. ¶ 26. Plaintiffs aver that Tube-Mac will be able to make and sell the system claimed in the '049 Patent if Mackay and Hewson are added as co-inventors of the '049 Patent. Id. at ¶ 27. Plaintiffs' Amended Complaint asserts a single claim for Correction of Inventorship of U.S. Patent No. 9,376,049 B2. Am. Compl. 7.

II. Procedural History

Prior to filing the instant Motion, Campbell had filed several pro se motions seeking various forms of relief in this matter. See ECF Nos. 13, 14, 15, 18, 22, 24, 26, 29, 30. While each of Campbell's previous motions was denied, such denial was without prejudice. See Order of Ct.

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¶ 2, ECF No. 26 ("The Court notes that Mr. Campbell has already filed several pro se motions that facially do not provide a legal basis for relief. The Court has denied those motions without prejudice so that, in the event Mr. Campbell retains counsel, his counsel is not prevented from submitting substantively similar motions.").

This case was reassigned to the undersigned on February 4, 2020. ECF No. 43. On February 13, 2020, this Court entered a Memorandum Order of Court (ECF No. 47) which directed the Clerk of Courts to enter default with respect to Tranzgaz based upon Transgaz's failure to plead. Mem. Order of Ct. ¶ 2, ECF No. 47. The Court's February 13, 2020 Memorandum Order also permitted Campbell a final opportunity to respond, by March 4, 2020, to Plaintiffs' Amended Complaint. Id. at ¶ 3. Campbell filed the Motion at issue, styled as a "Response to Amended Claim and Motion for Dismissal for Want of Jurisdiction and Lack of Consent in an Improper Forum" (ECF No. 49), on February 17, 2020.1 Plaintiffs filed a Response in Opposition (ECF No. 52) to Campbell's Motion on February 26, 2020. On March 12, 2020, this Court entered an Order (ECF No. 58) that directed the parties to submit supplemental briefing with respect to the issue of personal jurisdiction, and specifically directed the parties to address: 1) the legal bases supporting the parties' respective arguments regarding personal jurisdiction; 2) the necessity of jurisdictional discovery; and 3) the applicability and effect of 35 U.S.C.§ 293 in the instant matter.2 March 12, 2020 Order of Ct. ¶ 2, ECF No. 58. Plaintiffs and Campbell submitted briefing in compliance with this Order on March 19, 2020 (ECF Nos. 59 and 60). In addition, each party also submitted an unsolicited second brief thereafter (ECF Nos. 60 and 61).

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In his Motion, Campbell asserts that he is a Canadian citizen, and that he has no contacts with Pennsylvania. Mot. for Dismissal 3 n.4. Campbell argues that, accordingly, this Court does not have personal jurisdiction over him. Campbell further asserts that all of the events at issue in Plaintiffs' Amended Complaint took place in Canada, not in Pennsylvania. Id. at 4. Campbell argues that Tube-Mac has not alleged a justiciable injury, and that Mackay and Hewson, who Campbell concedes have set forth such an injury, are Canadians who cannot be injured in Pennsylvania by activities or omissions which occurred outside of Pennsylvania. Mot. for Dismissal 2 n.2-3; 5; 11, ECF No. 49. Campbell further argues that he has not consented to this Court's jurisdiction in this matter, and that Campbell and Plaintiffs mutually consented to a venue clause which provided that the sole convenient forum for dispute resolution is Ontario, Canada. Id. at 4 n.6, ECF No. 49.

III. Legal Standard

While Campbell does not specifically set forth the statutory basis for his Motion for Dismissal, it is clear that the Motion challenges subject-matter jurisdiction, personal jurisdiction, and venue. It also seems to assert that Tube-Mac has not stated a claim against Campbell. See "Motion for Dismissal for Want of Jurisdiction and Lack of Consent in an Improper Forum" at 2 n.2-3, ECF No. 49. Thus, the present "Motion for Dismissal" seeks relief pursuant to Fed. R. Civ. P. 12(b)(1)-(3) and (6).

In reviewing a motion to dismiss under Federal Rule of Civil Procedure 12(b)(2) in a patent law case, district courts apply Federal Circuit law. See Akro Corp. v. Luker, 45 F.3d 1541, 1543 (Fed. Cir. 1995) (citing Beverly Hills Fan Co. v. Royal Sovereign Corp., 21 F.3d 1558, 1564, 30 USPQ2d 1001, 1006 (Fed.Cir.)) ("We apply the law of the Federal Circuit, rather than that of the regional circuit in which the case arose, when we determine whether the district court properly

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declined to exercise personal jurisdiction over an out-of-state accused infringer."); Breckenridge Pharm., Inc. v. Metabolite Labs., Inc., 444 F.3d 1356, 1362 (Fed. Cir. 2006) ("Here, the district court correctly applied Federal Circuit law governing personal jurisdiction to all claims because the question...

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