United States District Court, S.D. California
ORDER RE MOTION TO DISMISS [DOC. NO. 11]
Cathy Ann Bencivengo United States District Judge.
Laeger Built, LLC d/b/a Trimbros.com and Jeffery Laeger
(collectively “Defendants”) move to dismiss the
Complaint filed against them by Plaintiff Greenbroz, Inc.
(“Plaintiff”). Both Defendants move to dismiss
Plaintiff's Complaint for lack of personal jurisdiction,
pursuant to Fed. Civ. P. 12(b)(2); Defendant Jeffery Laeger
also moves to dismiss for failure to state a claim pursuant
to Fed. Civ. P. 12(b)(6). Defendants alternatively request
for a more definite statement pursuant to Fed. Civ. P. 12(e).
For the reasons set forth below, this Court denies the motion
to dismiss for lack of personal jurisdiction or in the
alternative motion for a more definite statement and grants
the motion to dismiss for failing to state a claim against
Defendant Jeffery Laeger.
is a corporation formed and organized in Nevada with its
principal place of business in San Diego, California. [Doc.
No. at ¶ 1.] Defendant Laeger Built, LLC is a limited
liability company organized and existing under Oregon law,
where its principal place of business is located.
[Id. at ¶¶ 2-3.] Defendant Jeffery Laeger
is the registered agent and principal officer of the
business. [Id. at ¶ 3.]
designs and manufactures various agricultural trimmers. [Doc.
No. 12.] Plaintiff is the owner of a design patent for a
blade assemble apparatus for trimming agricultural products
(“the Patent”). [Doc. No. 1 ¶¶ 4, 12.]
Plaintiff filed the Patent in August 2014 and it was issued
in May 2016. [Id. at ¶ 12.] On June 13, 2016,
Plaintiff sent a cease and desist letter to Defendants,
stating that Defendant's agricultural trimmer (“the
Product”) was infringing on its Patent. [Id.
at ¶ 16.] Defendants responded on June 29, 2016, denying
it was infringing and refusing to comply with the demands
contained therein. [Doc. No. 12-4 at 2-3.] On December 2,
2016, Plaintiff filed its Complaint against Defendants
alleging patent infringement, California trademark
infringement, and unfair competition under state common law
and the Lanham Act. [See generally Doc. No. 1.]
their moving papers, the parties cite exclusively to Ninth
Circuit law in analyzing personal jurisdiction. However, when
the personal jurisdiction analysis in an action is
“intimately related to patent law, ” Federal
Circuit law applies. Avocent Huntsville Corp. v. Aten
Int'l Co., 552 F.3d 1324, 1328 (Fed. Cir. 2008)
(applying Federal Circuit law where the jurisdictional issue
was intimately involved with the substance of the patent
as is the case here, the suit involves both patent and
non-patent claims, Federal Circuit law will also apply to the
issue of personal jurisdiction of non-patent claims if the
resolution of the patent infringement issue will be a
substantial factor in determining liability under
non-patent claims. Breckenridge Pharm., Inc. v.
Metabolite Labs., Inc., 444 F.3d 1356, 1361 (Fed. Cir.
2006); but see Elecs. for Imaging, Inc. v. Coyle,
340 F.3d 1344, 1348 (Fed. Cir. 2003) (applying regional
circuit law to non-patent declaratory claims of
non-misappropriation of trade secrets and non-breach of
three non-patent claims are California trademark infringement
and unfair competition, based on California common law and
the Lanham Act, 15 U.S.C. § 1125. [See
generally Doc. No. 1.] The personal jurisdiction
determination of these non-patent claims are governed by
Federal Circuit law because each arises under the same
underlying facts of the patent infringement claim and the
resolution of the patent claim is significant to the ruling
of these non-patent claims. See 3D Systems, Inc. v.
Aarotech Lab., Inc., 160 F.3d 1373, 1377 (Fed. Cir.
1998) (holding the state law claims of trade libel and
unfair competition “go hand-in-hand with [the
plaintiff's] patent infringement claims.”); see
also LSI Industries Inc. v. Hubbell Lighting, Inc., 232
F.3d 1369, 1371 (Fed. Cir. 2000) (applying Federal Circuit
law to personal jurisdiction issue for patent and trademark
Federal Circuit law applies to the entirety of
Defendant's motion to dismiss for lack of personal
jurisdiction. Under Federal Circuit law, the burden of
establishing jurisdiction is on the plaintiff. Silent
Drive, Inc. v. Strong Indus., Inc., 326 F.3d 1194, 1201
(Fed. Cir. 2003). The plaintiff need only make a prima facie
showing of jurisdiction to survive a motion to dismiss, when,
as is the case here, no jurisdictional discovery has been
conducted. Id. The district court must construe all
pleadings and affidavits in the light most favorable to the
plaintiff and resolve any factual conflicts in the affidavits
in the plaintiff's favor. Id. “[W]here the
plaintiff's factual allegations ‘are not directly
controverted, [they] are taken as true for purposes of
determining jurisdiction . . .'” Akro, 45
F.3d at 1543 (quoting Beverly Hills Fan Co. v. Royal
Sovereign Corp., 21 F.3d 1558, 1563 (Fed. Cir. 1994)).
a court has personal jurisdiction over an out-of-state
defendant typically involves two inquiries: (1) whether a
forum state's long-arm statute permits service of
process; and (2) whether the assertion of personal
jurisdiction would violate due process. Inamed Corp. v.
Kuzmak, 249 F.3d 1356, 1359-60 (Fed. Cir. 2001). Here,
because “California's long-arm statute is
coextensive with the limits of due process, ” the sole
inquiry is a “whether jurisdiction comports with due
process.” Autogenomics, Inc. v. Oxford Gene Tech.
Ltd., 566 F.3d 1012, 1017 (Fed. Cir. 2009) (citing Cal.
Code Civ. Proc. § 410.10).
process requires the out of state defendant to have certain
“minimum contacts with the forum state such that the
maintenance of the suit does not offend traditional notions
of fair play and substantial justice.” Int'l
Shoe v. Washington, 326 U.S. 310, 316 (1945). Personal
jurisdiction can be general or specific, however, Plaintiff
only argues for specific personal jurisdiction. [See
Doc. No. 12 at 11.]
jurisdiction must be based on activities that arise out of or
relate to the cause of action. Id. The Federal
Circuit has established a three-prong test that must be met
to exercise specific personal jurisdiction: “(1)
whether the defendant purposefully directed its activities at
the residents of the forum; (2) whether the claim arises out
of or is related to those activities; and (3) whether
assertion of personal jurisdiction is reasonable and
fair.” Akro Corp. v. Luker, 45 F.3d 1551,
1545-46 (Fed. Cir. 1995). “The first two factors
correspond with 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 (referencing Int'l Shoe, 326
U.S. at 316.) “The plaintiff ...