Biomedical Device Consultants & Labs. of Colo. v. Vivitro Labs.

1

BIOMEDICAL DEVICE CONSULTANTS & LABORATORIES OF COLORADO, LLC, Plaintiff, v. VIVITRO LABS, INC., Defendant.

Civil Action No. 23-cv-00867-JLK

United States District Court, D. Colorado

May 29, 2023

ORDER GRANTING IN PART DEFENDANT'S MOTION-TO DISMISS FOR LACK OF PERSONAL JURISDICTION (ECF NO 20)

JOHN L. KANE, SENIOR U.S. DISTRICT JUDGE

This patent-infringement case was brought by Plaintiff Biomedical Device Consultants & Laboratories of Colorado, LLC (“BDC”) in its home state of Colorado against Defendant ViVitro Labs, Inc. (“ViVitro”), a Canadian company with no offices or employees in the United States and no relevant contacts with Colorado. See Compl. ¶¶ 6-7, ECF No. 1, Mouneimne Decl ¶¶ 3-12, 15, ECF No. 20-1. Presently before me is ViVitro's Motion to Dismiss for Lack of Personal Jurisdiction (ECF No. 20).^[1] To establish personal jurisdiction over ViVitro in this case, BDC relies on Federal Rule of Civil Procedure 4(k)(2), which allows a district court to exercise personal jurisdiction over a foreign defendant when that defendant's contacts with the United States as a whole are sufficient to support the exercise of jurisdiction but the defendant is not subject to jurisdiction in any particular state's courts. ViVitro's Motion to Dismiss argues that ViVitro was subject to personal jurisdiction in other states' courts and consequently that Rule 4(k)(2) cannot be applied. “[T]he determinative question for [the] Motion to Dismiss is whether specific personal jurisdiction existed in California” at the time this suit was filed. Reply in Supp. of Mot. to Dismiss at 3, ECF No. 27. I find that ViVitro's contacts with California were sufficient to establish personal jurisdiction and that jurisdiction here is therefore lacking.

However instead of dismissing the case as requested by ViVitro, I conclude that the interests of justice support transferring the case to the United States District Court for the Central District of California.

I. Legal Standards

A. Rule 4(k)(2)

Federal Rule of Civil Procedure 4(k)(2) provides that, “[f]or a claim that arises under federal law, serving a summons . . . establishes personal jurisdiction over a defendant if:

(A) the defendant is not subject to jurisdiction in any state's courts of general jurisdiction; and

(B) exercising jurisdiction is consistent with the United States Constitution and laws.

In patent-infringement cases, Federal Circuit law applies to personal-jurisdiction questions. See Synthes (U.S.A.) v. G.M. Dos Reis Jr. Ind. Com de Equip. Medico, 563 F.3d 1285, 1292 (Fed. Cir. 2009). The Federal Circuit “read[s] Rule 4(k)(2) to allow a court to exercise personal jurisdiction over a defendant if (1) the plaintiff's claim arises under federal law, (2) the defendant is not subject to jurisdiction in any state's courts of general jurisdiction, and (3) the exercise of jurisdiction comports with due process.” Id. at 1293-94. ViVitro contests only the second prong of this standard. See Mot. to Dismiss at 12 n.5, ECF No. 20 (“ViVitro agrees that BDC's claim arises under federal law and [ViVitro] does not contest that-were Rule 4(k)(2) applicable, i.e., if there were not another forum where jurisdiction is proper-due process requirements would be satisfied.”).

“Ordinarily, the plaintiff bears the burden of proof as to whether the defendant is subject to personal jurisdiction.” Synthes, 563 F.3d at 1294.^[2] But, under the second prong of the standard, a defendant may only avoid the application of Rule 4(k)(2) by “designat[ing another] suitable forum in which the plaintiff could have brought suit.” Touchcom, Inc. v. Bereskin & Parr, 574 F.3d 1403, 1415 (Fed. Cir. 2009); In re Stingray IP Sols., LLC, 56 F.4th 1379, 1385 (Fed. Cir. 2023) (“[T]he defendant's burden under the negation requirement entails identifying a forum where the plaintiff could have brought suit-a forum where jurisdiction would have been proper at the time of filing, regardless of consent.” (quoting Merial Ltd. v. Cipla Ltd., 681 F.3d 1283, 1294 (Fed. Cir. 2012))). ViVitro points to both California and Massachusetts as other forums in which BDC could have brought suit against it. Because I find ViVitro had more substantial contacts with California and that ViVitro would have been subject to personal jurisdiction there, I do not consider ViVitro's contacts with Massachusetts.

B. California's Long-arm Statute and Due Process

Determining whether personal jurisdiction over ViVitro would have existed in California “involves two inquiries: whether [California's] long-arm statute permits service of process, and whether the assertion of personal jurisdiction would violate due process.” Inamed Corp. v. Kuzmak, 249 F.3d 1356, 1359 (Fed. Cir. 2001) (citing Genetic Implant Sys., Inc. v. Core-Vent Corp., 123 F.3d 1455, 1458 (Fed. Cir. 1997)). “[B]ecause California's long-arm statute is coextensive with the limits of due process, the two inquiries collapse into a single inquiry: whether jurisdiction comports with due process.” Id. at 1360 (citing Dainippon Screen Mfg. Co. v. CFMT, Inc., 142 F.3d 1266, 1270 (Fed. Cir. 1998)). As explained by the Supreme Court in International Shoe Co. v. Washington, due process demands that the 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.'” 326 U.S. 310, 316 (1945) (quoting Milliken v. Meyer, 311 U.S. 457, 463 (1940)).

“Courts may exercise personal jurisdiction over defendants on either of two bases: general or specific jurisdiction.” Touchcom, 574 F.3d at 1410 (citing Synthes, 563 F.3d at 1297). ViVitro contends that it was subject to specific jurisdiction in California. The Federal Circuit has “outlined a three-factor test for specific jurisdiction, which considers whether (1) the defendant purposefully directed its activities at residents of the forum, (2) the claim arises out of or relates to the defendant's activities with the forum, and (3) assertion of personal jurisdiction is reasonable and fair. Synthes, 563 F.3d at 1297 (citing Elecs. for Imaging, 340 F.3d at 1350). “The first two factors correspond to the ‘minimum contacts' prong of the International Shoe analysis, and the third factor corresponds with the ‘fair play and substantial justice' prong of the analysis.” Inamed, 249 F.3d at 1360 (citing Akro Corp. v. Luker, 45 F.3d 1541, 1545 (Fed. Cir. 1995)). “Under [the] test, a court may properly assert specific jurisdiction, even if the contacts are isolated and sporadic, so long as the cause of action arises out of or relates to those contacts.” Synthes, 563 F.3d at 1297 (citing Silent Drive, Inc. v. Strong Indus., Inc., 326 F.3d 1194, 1200 (Fed. Cir. 2003)).

II. Relevant Facts^[3]

BDC's Complaint alleges “ViVitro has recently launched a new heart valve durability tester that infringes at least one of BDC's Patents.” Compl. ¶ 3. According to the Complaint, ViVitro imports and offers to sell its new product-the Heart Valve Durability Tester with Advanced Dual Control Technology (the “ADC tester”)-in the United States. Id. ¶ 18, Mouneimne Decl. ¶ 14.

ViVitro's President and Business Development Manager attended a trade show in Anaheim, California, in February 2023. Id. ¶¶ 2, 18. ViVitro “paid for and operated a booth” at that trade show and “displayed and provided demonstrations of the prototype” of the ADC tester. Id. ¶ 18. By having its representatives attend the trade show, ViVitro intended “to market and generate customer interest in and potential sales of” the ADC tester and ViVitro's other products and services. Id. ViVitro also sent representatives around the Irvine and San Diego areas in California on two other occasions between September 2022 and the filing of this suit. Id. ¶ 19. The purpose of those trips was to promote and market the ADC tester to at least ten potential customers. Id. ViVitro solicited purchase orders for the ADC tester from eight potential customers in California, but it has not yet received any actual orders from customers there. Id.

III. Analysis

A. Specific Personal Jurisdiction in California

Based on those contacts, specific jurisdiction existed in California at the time this suit was filed. While I do not disagree with BDC that mere presence at a single trade show is insufficient to support personal jurisdiction, see Resp. to Mot. to Dismiss, ECF No. 25 at 9, 12, BDC ignores the nuances in the case law and does not account for the fact that ViVitro's conduct involved more than just attending a trade show.

ViVitro purposefully directed its activities at residents of California. Its representatives “paid for and operated a booth” at the trade show in California, and they “displayed and provided demonstrations of the prototype” of the ADC tester. Mouneimne Decl. ¶ 18. Their intent was “to market and generate customer interest in and potential sales of” the ADC tester. Id. In addition to the trade show, ViVitro sent representatives to promote and market the ADC tester to at least ten potential customers in California. Id. ¶ 19. These facts make it clear that ViVitro directed its activities at parties in California. Reviewing the allegations in the Complaint, BDC's claim unquestionably arises out of ViVitro's activities in California. The Complaint identifies as infringing conduct ViVitro's importation of the ADC tester into California and its display of and offer to sell the product at the trade show in California. See Compl. ¶¶ 20, 25. As for the final factor of the test, neither party provides any basis for why the exercise of personal jurisdiction over ViVitro in California would not comport with fair play and substantial justice. And I discern that it would.

My determinations here are influenced by the...