Whistler Corp. v. Solar Electronics, Inc., Civ. A. No. 87-1341-Y.

• Decision Date: 25 April 1988
• Docket Number: Civ. A. No. 87-1341-Y.
• Court: U.S. District Court — District of Massachusetts
• Parties: WHISTLER CORPORATION, Plaintiff, v. SOLAR ELECTRONICS, INC. Defendant.

684 F. Supp. 1126

WHISTLER CORPORATION, Plaintiff, v. SOLAR ELECTRONICS, INC. Defendant.

Civ. A. No. 87-1341-Y.

United States District Court, D. Massachusetts.

April 25, 1988.

Charles L. Gagnebin, III, Paul J. Hayes, Steven M. Bauer, Weingarten, Schurgin, Gagnebin & Hayes, Boston, Mass., for plaintiff.

Leo Reynolds, Hamilton Brook Smith & Reynolds, Lexington, Mass., for defendant.

MEMORANDUM AND ORDER

YOUNG, District Judge.

Plaintiff Whistler Corporation ("Whistler") brought this action against defendant Solar Electronics, Inc. ("Solar"), seeking a declaratory judgment that United States Patent 3,550,008, which is owned by Solar, is invalid, unenforceable, and not infringed by a Whistler product. Whistler alleges that the subject matter jurisdiction of this Court is based on 28 U.S.C. §§ 1338(a), 2201, and 2202, and that venue exists pursuant to 28 U.S.C. § 1391(b). This matter is presently before the Court on the June 29, 1987 motion by defendant Solar to dismiss the case for lack of jurisdiction and to quash the attempted service of process.

I. BACKGROUND

Plaintiff Whistler, a Massachusetts corporation having an office in Westford, Massachusetts, is a manufacturer of radar detector devices. Formerly known as Controlonics, Whistler manufactured radar detectors for Tandy Corporation ("Tandy"), a Delaware corporation, during the years 1985 and 1986. These radar detectors were sold under the Radio Shack name.

Defendant Solar, a Colorado corporation, is the owner of United States Patent 3,550,008 (the "'08 Patent"), a patent concerning the electronic circuitry of a police radar detector. Such electrical circuitry technology was developed by James Bright ("Bright"), who was granted the '08 Patent in December, 1970. Bright then transferred the patent to Solar in exchange for a one-half interest in the Solar stock. Between 1968 and 1974 Solar sold approximately 15,000 radar detectors in Colorado, Kentucky, Tennessee, Missouri, and Oklahoma; however, Solar stopped selling and manufacturing radar detectors in 1974.

On December 23, 1986, Solar filed an action against Tandy in the United States District Court for the Northern District of Illinois, alleging that Tandy's sale of radar detectors infringed the '08 Patent. One of the accused infringing radar detectors was Tandy Model No. 22-1613, which was manufactured by Whistler, then known as Controlonics. Whistler then filed this action against Solar on May 26, 1987, seeking a declaratory judgment that the '08 Patent is invalid, unenforceable, and not infringed by Tandy Model No. 22-1613.

Solar asserts the following arguments in support of its motion to dismiss: 1) this Court lacks in personam jurisdiction over Solar; 2) there is no subject matter jurisdiction over this action; 3) venue in this patent declaratory judgment case is not proper in this district; and 4) attempted service of process was not proper and should be quashed. Accepting all Whistler's statements as true for the purpose of this motion only, the Court rules that it lacks in personam jurisdiction over defendant Solar.¹

II. DISCUSSION

A. Personal Jurisdiction in Federal Question Cases.

In arguing whether this Court has personal jurisdiction over defendant Solar, both parties analyzed this problem in terms of a state's power to summon an out-of-state defendant with respect to the restraints of the due process standards under the fourteenth amendment. This case, however, is based on federal question jurisdiction, which is to be governed by the due process standards of the fifth amendment rather than the fourteenth amendment.²Driver v. Helms, 577 F.2d 147, 156-57 (1st Cir.1978), rev'd on other grounds sub nom. Stafford v. Briggs, 444 U.S. 527, 100 S.Ct. 774, 63 L.Ed.2d 1 (1980); Stanley Works v. Globemaster, Inc., 400 F.Supp. 1325, 1334 n. 13 (D.Mass.1975) (holding that "in the context of a patent infringement action the issue of what constitutes `minimum contacts' is a matter of federal law") (citations omitted).

At the outset it must be understood that "minimum contacts" with a particular district or state for purposes of personal jurisdiction is not a limitation imposed on the federal courts in a federal question case by due process concerns. The Constitution does not require the federal districts to follow state boundaries.

Johnson Creative Arts, Inc. v. Wool Masters, Inc., 743 F.2d 947, 950 (1st Cir.1984) (footnote and citation omitted).

In establishing the jurisdictional scope of the fifth amendment, First Circuit courts have stated repeatedly that the fifth amendment permits a federal court to exercise personal jurisdiction over a defendant in a federal question case if that defendant has sufficient contacts with the United States as a whole. E.g., Trans-Asiatic Oil Ltd. S.A. v. Apex Oil Co., 743 F.2d 956, 959 (1st Cir.1984); Catrone v. Ogden Suffolk Downs, Inc., 647 F.Supp. 850, 853 (D.Mass. 1986); Amtrol, Inc. v. Vent-Rite Valve Corp., 646 F.Supp. 1168, 1171 (D.Mass. 1986); Buckeye Associates, Ltd. v. Fila Sports, Inc., 616 F.Supp. 1484, 1488 n. 5 (D.Mass.1985). In the present case, it cannot be contested that Solar, a Colorado corporation, has sufficient minimum contacts with the United States to satisfy this broad due process standard of the fifth amendment. The Court's jurisdictional inquiry, however, does not end here.

The next step is to determine whether the nationwide scope of personal jurisdiction in a federal question case is limited by Rule 4 of the Federal Rules of Civil Procedure. Johnson Creative, 743 F.2d at 950. As the Johnson Creative court stated:

Rule 4(f) generally limits the service of process of federal district courts to the territorial limits of the state in which the court is held. Rule 4(e) allows for service outside the state when authorized by a statute of the United States or when a statute or rule of court of the state in which the district court is held provides for such service.³

Id. Therefore, under Rule 4, there must be a federal statute that specifically authorizes nationwide service of process in order for the federal district court to exercise nationwide personal jurisdiction over a defendant in a federal question case. If there is no such statutory authorization, the federal district court in a federal question case cannot exercise nationwide in personam jurisdiction. E.g., Catrone, 647 F.Supp. at 854; Buckeye, 616 F.Supp. at 1488 n. 5; Colon v. Gulf Trading Co., 609 F.Supp. 1469, 1474-75 (D.P.R.1985). See Merrill v. Zapata Gulf Marine Corp., 667 F.Supp. 37, 39 (D.Me.1987). In the present case, there is no federal statutory authorization for nationwide service of process under the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201, 2202, the Patent Act, 35 U.S.C. § 1 et seq. and the provisions of 28 U.S.C. § 1338. This Court thus cannot exercise nationwide personal jurisdiction over Solar.

Where there is no federal statute authorizing nationwide service of process the Court must look to the appropriate state rule of court, which is the Massachusetts long arm statute in this case, to determine whether it has jurisdiction over Solar. See Johnson Creative, 743 F.2d at 950; Catrone, 647 F.Supp. at 855 (citing Buckeye, 616 F.Supp. at 1488 n. 5). In this inquiry, the minimum contacts analysis under the fourteenth amendment acts as a precondition to the Court's exercise of personal jurisdiction in a federal question case. See Johnson Creative, 743 F.2d at 950.

B. Massachusetts Long Arm Statute.

Under the Massachusetts long arm statute, courts employ a two-part inquiry to determine whether they may exercise personal jurisdiction over a nonresident defendant: "`(1) is the assertion of jurisdiction authorized by the statute, and (2) if authorized, is the exercise of jurisdiction under State law consistent with basic due process requirements mandated by the United States Constitution?'" Hahn v. Vermont Law School, 698 F.2d 48, 50 (1st Cir.1983) (quoting Good Hope Indus., Inc. v. Ryder Scott Co., 378 Mass. 1, 5-6, 389 N.E.2d 76 1979).

The long arm statute provides, in relevant part:

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

(a) transacting any business in this commonwealth;

(b) contracting to supply services or things in this commonwealth;

(c) causing tortious injury in this commonwealth by an act or omission in this commonwealth;

(d) causing tortious injury in this commonwealth by an act or omission outside this commonwealth if he regularly does or solicits business, or engages in any other persistent course of conduct, or derives substantial revenue from goods used or consumed or services rendered, in this commonwealth.

Mass.Gen.L. ch. 223A, § 3. Whistler has the burden of proving that this Court has personal jurisdiction over Solar under this statute. American Freedom Train Found v. Spurney, 747 F.2d 1069, 1075 (1st Cir.1984).

Whistler's principal argument concerning this Court's jurisdiction is the following:

Because the brunt of the harm Solar caused by suing Whistler's product in Chicago was suffered in this State, and because Massachusetts is the focal point of the harm Solar's conduct has caused— Whistler's offices and manufacturing facilities are predominantly located here— jurisdiction does properly lie in this State.

Importantly, Whistler is not charging Solar with some form of mere "untargeted" negligence which only coincidentally injured Whistler in this state (sic). Rather, it is Solar's intentional conduct in specifically targeting Tandy's products, products which Solar knew were being manufactured for Tandy and which Solar knew before this lawsuit was filed were made by Whistler here in Massachusetts, which subjects it to this Court's jurisdiction.

Whistler's Memorandum in Opposition to Solar's Motion to Quash and to Dismiss at 3 (hereinafter "Whistler's Memorandum in Opposition") (emphasis in original). In...