United States District Court, S.D. California
P.I.C. INTERNATIONAL INC., a California corporation d/b/a H2Odyssey and LI CHUNG PLASTICS INDUSTRY CO., a Taiwan corporation, Plaintiffs,
MIFLEX 2 SPA, an Italy corporation and MAURO MAZZO, an individual, Defendants.
ORDER ON DEFENDANT MAURO MAZZO'S MOTION TO
DISMISS AND REQUEST FOR SANCTIONS [DOC. NO. 16.]
Cathy Ann Bencivengo United States District Judge
matter comes before the Court on Defendant Mauro Mazzo's
(“Mazzo”) motion to dismiss [Doc. No. 16]. On
August 8, 2017, Defendant Mazzo sought dismissal of the
lawsuit for lack of personal jurisdiction and lack of
subject-matter jurisdiction pursuant to Federal Rules of
Civil Procedure 12(b)(1) and 12(b)(2). Additionally,
Defendant Mazzo moved the Court for an award of $6, 135.00 in
attorneys' fees, pursuant to 28 U.S.C. § 1927.
interim between Defendant Mazzo's filing of the motion to
dismiss and Plaintiffs' response in opposition's due
date, this Court issued an order on Defendant MiFlex 2
S.P.A's motion to dismiss. Based on the affidavits and
documentary evidence before it the Court determined that
Defendant MiFlex was not subject to the personal jurisdiction
in this court. [Doc. No. 17.] In reaching its conclusion, the
Court relied on Defendant Mazzo's declaration that
provided details of MiFlex's contacts with California and
lack thereof, to find that MiFlex did not have sufficient
minimum contacts with California to support a claim of
specific personal jurisdiction over it. [See Doc.
No. 12-2. at ¶¶ 12, 18, 19-23, 25, 26,
28-32.] Defendant Mazzo relies on essentially the same
evidence as MiFlex did in its earlier motion.
deadline for Plaintiffs to file their opposition has come and
gone, and as of the date of this order, Plaintiffs have not
filed a response. On September 5, 2017, Defendant Mazzo filed
his reply, noting Plaintiffs' failure to oppose the
motion and requesting the Court grant his motion
to dismiss and for monetary sanctions in full. [Doc. No. 18.]
Motion to Dismiss
Rule of Civil Procedure 12(b)(2) allows a district court to
dismiss an action for lack of personal jurisdiction. In order
to survive the motion to dismiss, Plaintiffs must show that
Defendant Mazzo has minimum contacts with the forum state as
will “potentially allow exercise of personal
jurisdiction” over him. Inamed Corp. v.
Kuzmak, 249 F.3d 1356, 1360 (Fed. Cir. 2011). Because
the motion to dismiss for lack of jurisdiction is based on
affidavits and documentary evidence, Plaintiffs are required
to make a prima facie showing that Mazzo is subject to
personal jurisdiction in California. See AFTG-TG, LLC v.
Nuvoton Tech. Corp., 689 F.3d 1358, 1360 (Fed. Cir.
2012); Autogenomics, Inc. v. Oxford Gene Tech., 566
F.3d 1012, 1017 (Fed. Cir. 2009); Elecs. for Imaging,
Inc. v. Coyle, 340 F.3d 1344, 1349 (Fed. Cir. 2003)
support of his motion to dismiss, Defendant Mazzo submitted
declarations from himself, Matthew C. Lapple, and
incorporates by reference, the earlier declaration he made in
support of Defendant MiFlex's motion to dismiss. [Doc.
Nos. 12-2, 16-2, 16-5] In the declaration filed in support of
this motion Mazzo attests that he is an Italian citizen,
domiciliary and businessman who has lived most of his life in
Italy. [Doc. No. 16-2 at ¶ 9.] Mazzo declares that in
May 2015 he executed a contract with MiFlex 2 to sell all of
his rights and interests in the ‘722 patent at issue in
this case. [Id. at ¶¶ 13, 14.] Mazzo also
declares that, in his personal capacity, he has no contacts
with California other than vacations taken here in the past,
does not own or rent any property in California, has no
assets or employees in California, and has never paid any
California taxes. [Doc. No. 16-2 at ¶¶ 19, 22, 23.]
He also states that with the exception of the present
lawsuit, neither MiFlex nor himself, has ever been sued or
filed a lawsuit in California, and since the patent's
issuance in 2013, has sent only eight cease and desist
letters to five companies, two of which, Oceanic and Trident
Diving Equipment, are based in California. [Doc. No. 12-2 at
¶¶ 15, 16, 34-36; Doc. No. 16-2 at ¶ 18, 20]
filing an opposition, Plaintiffs have not met their burden of
demonstrating that Mazzo “has purposefully directed his
activities at residents of the forum, and the litigation
results from alleged injuries that arise out of or relate to
those activities.'” Avocent Huntsville Corp. v.
Aten Int'l Co., Ltd., 552 F.3d 1324, 1330 (Fed. Cir.
2008) (quoting Burger King Corp. v. Rudzewicz, 471
U.S. 462, 476-78 (1985) (internal quotations and citations
omitted)). In the absence of evidence to the contrary, the
Court finds that Defendant Mazzo is not subject to personal
jurisdiction in this Court.
the Court GRANTS Defendant Mazzo's motion to dismiss
[Doc. No. 16], and hereby ORDERS that Plaintiffs' claims
against Mazzo are DISMISSED.
Request for Attorneys' Fees
Mazzo moved the Court for an award of $6, 135.00 in
attorneys' fees, pursuant to 28 U.S.C. § 1927.
Section 1927 provides that:
[a]ny attorney or other person admitted to conduct cases in
any court of the United States or any Territory thereof who
so multiplies the proceedings in any case unreasonably and
vexatiously may be required by the court to satisfy
personally the excess costs, expenses, and attorneys'
fees reasonably incurred because of such conduct.
28 U.S.C. § 1927. Section 1927 sanctions must be
supported by a finding of bad faith or recklessness.
Lahiri v. Universal Music & Video Distrib.
Corp., 606 F.3d 1216, 1219 (9th Cir. 2010); In re
Keegan Mgmt. Co., Sec. Litig., 78 F.3d 431, 436 (9th
Cir. 1996). “Bad faith is present when an attorney
knowingly or recklessly raises a frivolous argument, or
argues a meritorious claim for the purpose of harassing an
opponent.” In re Keegan, 78 F.3d at 436
Mazzo asserts that on multiple occasions requests were made
to dismiss him from the case because he was not a proper
defendant in the declaratory judgment action. Mazzo declares
that he provided Plaintiffs' counsel with a
“Confirmatory Assignment” attesting to the
comprehensiveness of the original assignment he executed that
transferred all of his rights to the ‘722 patent,
including the right to seek damages for past infringement, to
MiFlex. [Doc. Nos. 16-3, 16-4.] The Confirmatory Assignment
was signed on the July 21, 2017 and emailed to
Plaintiffs' counsel, Trevor Coddington. [Doc. No. 16-4;
16-5 at ¶ 7; Doc. No. 16-10.] Defendant Mazzo contends
that upon receipt of this indisputable proof that he
personally could not and did not pose any patent enforcement
threat to Plaintiffs they should have dismissed him from this
case. In Mazzo's view Plaintiffs' have
“vexatiously and unreasonably multiplied the
proceedings in this case by refusing to voluntarily dismiss
Mr. Mazzo.” [Doc. No 16-1 at 21.] Further,