Petedge, Inc. v. Fortress Secure Solutions, LLC

144 F. Supp. 3d 249, 2015 U.S. Dist. LEXIS 155254, 2015 WL 7253683
CourtDistrict Court, D. Massachusetts
DecidedNovember 17, 2015
DocketCivil Action No. 15-11988-FDS
StatusPublished
Cited by2 cases

This text of 144 F. Supp. 3d 249 (Petedge, Inc. v. Fortress Secure Solutions, LLC) is published on Counsel Stack Legal Research, covering District Court, D. Massachusetts primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Petedge, Inc. v. Fortress Secure Solutions, LLC, 144 F. Supp. 3d 249, 2015 U.S. Dist. LEXIS 155254, 2015 WL 7253683 (D. Mass. 2015).

Opinion

MEMORANDUM AND ORDER ON DEFENDANT’S MOTION TO DISMISS

F. Dennis Saylor IV, United States District Judge

This is an action for patent and trademark infringement. Plaintiff PetEdge, Inc., is a Massachusetts-based pet products manufacturer. PetEdge owns U.S. Patent No. 7,621,236 (“the '236 patent”) for a set of folding steps that convert into a ramp for pets to climb on to a bed. It markets the steps under the PET STUDIO family of marks, which includes U.S. Trademark Reg. No. 4,759,263.

Defendant Fortress Secure Solutions, LLC is a Washington limited liability company that sells pet products (and security systems) through national online retailers. The complaint alleges that Fortress produces and sells a product that infringes on [251]*251the '236 patent and the PET STUDIO mark.

Fortress has moved to dismiss pursuant to Fed. R. Civ. P. 12(b)(2) for lack of personal jurisdiction. For the following reasons, the motion will be denied.

I. Background

A. Procedural Background

On June 1, 2015, PetEdge filed suit against Fortress. The complaint alleges (1) patent infringement in violation of 35 U.S.C. § 271(a)-(c); (2) Lanham Act trademark infringement in violation of 15 U.S.C. § 1114(1); (3) Lanham Act unfair competition and false designation of origin in violation of 15 U.S.C. § 1125(a); (4) common-law trademark infringement; (5) common-law unfair competition; and (6) unfair and deceptive trade practices in violation of Mass. Gen. Laws ch. 93A. (Compl. ¶¶ 25-62).

On June 29, 2015, Fortress moved to dismiss the complaint for lack of personal jurisdiction under Fed. R. Civ. P. 12(b)(2). That motion was not accompanied by any affidavits. In response, PetEdge filed an opposition and a declaration by its president and CEO, Andrew Katz, on July 13, 2015. On July 20, 2015, Fortress filed a motion for leave to file a reply to Pe-tEdge’s opposition. The Court granted Fortress’s motion, and with its reply, Fortress also filed a declaration by its president, Michael Hofeditz. PetEdge then moved to strike the Hofeditz declaration as new evidence under Local Rule 7.1(b)(1) and for failure to confer under Local Rule 7.1(a)(2).

B. Factual Background

Fortress Secure Solutions, LLC is a limited liability company based in Walla Walla, Washington. (Hofeditz Decl. ¶ 2). Fortress does not have an office in Massachusetts and is not registered to do business in the Commonwealth. (Id. at ¶¶ 3-4). Fortress does not pay taxes in Massachusetts. (Id. at ¶ 4). Fortress contends that it does not “specifically design or target any of its products for sale in Massachusetts,” and does not “market its products to Massachusetts customers.” (Id. at ¶¶ 5-6).

Fortress does, however, market and sell products through online retailers to customers across the United States. (Id. at ¶ 7). Fortress products are available for purchase and delivery in Massachusetts, but only through online retailers such as Amazon.com and PetStew.com. (Katz Decl. ¶¶ 7,10).

Under the alternative name of “Te-chege,” Fortress advertised and offered for sale a product called the “Pet Studio Pine Frame Dog RampSteps, 3 Step” on Amazon.com. (Id. at ¶ 7).1 Massachusetts Internet shoppers could view that product if they searched for “Pet Studio ramp steps” on Amazon.com. (Katz Decl. Ex. 1). Below the description of Fortress’s product, in the “customers who viewed this item also viewed” section, Amazon.com listed two sets of patented ramp steps sold by PetEdge under its PET STUDIO mark. (Id.). PetEdge’s three-step product was sold at a higher price than Fortress’s “Pet Studio Pine Frame Dog RampSteps.” (Id.).

Two Massachusetts PetEdge employees independently discovered the Fortress product on Amazon.com and purchased it. (Katz Decl. ¶¶ 7-8). Both sets of ramp steps were shipped to the PetEdge employees at their Massachusetts homes. (Id.). The record does not indicate whether Fortress sold its allegedly infringing product directly to Massachusetts residents [252]*252through Amazon.com (and thus shipped the product itself), or whether it sold its product directly to Amazon.com without further contact with the end customers. Fortress also appears to sell other products on Amazon.com that are available for purchase by Massachusetts residents. {Id. at ¶ 13).

PetEdge is a Massachusetts corporation that develops and distributes pet products, including a patented set of folding steps that convert into a ramp for pets to climb on to a bed. {Id. at ¶¶ 1, 3). PetEdge contends that Fortress’s product infringes on its '236 patent and PET STUDIO marks. {Id. at ¶¶ 7, 9).

II. Standard of Review

In determining whether a district court has personal jurisdiction over an out-of-state alleged patent infringer, the law of the Federal Circuit, rather than that of the regional circuit in which the district court sits, applies. Nuance Commc’ns, Inc. v. Abbyy Software House, 626 F.3d 1222, 1230 (Fed.Cir.2010). But in trademark infringement disputes, the jurisdictional inquiry is governed by the law of the circuit in which the district court sits. See, e.g., Edvisors Network, Inc. v. Educational Advisors, Inc., 755 F.Supp.2d 272, 284 (D.Mass.2010) (applying the constitutional due-process test as interpreted by the First Circuit).

Where, as here, a district court considers a motion to dismiss for lack of personal jurisdiction in a patent case without first holding an evidentiary hearing, the court must resolve all factual disputes in the plaintiffs favor. Deprenyl Animal Health, Inc. v. University of Toronto Innovations Found., 297 F.3d 1343, 1347 (Fed.Cir.2002). The court then applies the prima facie standard to determine whether it has jurisdiction over the defendant. Trintec Indus., Inc. v. Pedre Promotional Prods., Inc., 395 F.3d 1275, 1282 (Fed.Cir.2005). The prima facie standard is the “ ‘most conventional’ of the[ ] methods” for determining personal jurisdiction. Daynard v. Ness, Motley, Loadholt, Richardson & Poole, P.A., 290 F.3d 42, 51 (1st Cir.2002) (quoting Foster-Miller, Inc. v. Babcock & Wilcox Can., 46 F.3d 138, 145 (1st Cir.1995)). In conducting a prima fa-cie

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144 F. Supp. 3d 249, 2015 U.S. Dist. LEXIS 155254, 2015 WL 7253683, Counsel Stack Legal Research, https://law.counselstack.com/opinion/petedge-inc-v-fortress-secure-solutions-llc-mad-2015.