United States District Court, D. Oregon
Owen W. Dukelow and David P. Cooper, KOLISCH HARTWELL, P.C., 520 S.W. Yamhill Street, Suite 200, Portland, OR 97204. Of Attorneys for Plaintiff.
Joseph A. Mohr, MOHR INTELLECTUAL PROPERTY LAW SOLUTIONS, P.C., 522 S.W. Fifth Avenue, Suite 1390, Portland, OR 97204. Of Attorneys for Defendant.
OPINION AND ORDER
MICHAEL H. SIMON, District Judge.
The question before the Court is whether it may exercise personal jurisdiction over Defendant Jerald A. Bovino ("Defendant" or "Bovino"). Plaintiff Invellop, LLC ("Plaintiff" or "Invellop") brings this action seeking a declaratory judgment of patent noninfringement, a declaratory judgment of patent invalidity, and a judgment of abuse of process under either Oregon or Colorado law. Bovino, entering a limited appearance, moves to dismiss Invellop's complaint pursuant to Federal Rule of Civil Procedure 12(b)(2) ("Rule 12(b)(2)") due to lack of personal jurisdiction over Bovino. The Court grants Bovino's motion.
The "issue of personal jurisdiction in a declaratory action for non-infringement is intimately related to patent law' and thus governed by Federal Circuit law regarding due process." Breckenridge Pharm., Inc. v. Metabolite Labs., Inc., 444 F.3d 1356, 1361 (Fed. Cir. 2006) (quoting Silent Drive, Inc. v. Strong Indus., Inc., 326 F.3d 1194, 1201 (Fed. Cir. 2003)). Where the parties conduct limited discovery related to jurisdictional issues and a district court does not conduct an evidentiary hearing, the plaintiff has the "burden of proving by a preponderance of the evidence the facts necessary to establish personal jurisdiction over the defendant." Pieczenik v. Dyax Corp., 265 F.3d 1329, 1334 (Fed. Cir. 2001). In evaluating a Rule 12(b)(2) motion to dismiss for lack of personal jurisdiction without an evidentiary hearing, the court "accepts uncontroverted allegations in the complaint as true and resolves factual disputes in the plaintiffs' favor." AFTG-TG, LLC v. Nuvoton Tech. Corp., 689 F.3d 1358, 1360 (Fed. Cir. 2012).
Plaintiff Invellop is an Oregon-based company that sells protective covers for various electronic devices, including tablets and portable computers. Invellop has an agreement with Amazon.com, Inc. ("Amazon"), a Washington-based company, allowing Invellop to sell its products through Amazon.com at the "Invellop storefront." Invellop processes and fulfills the orders and receives payment from Amazon.
Defendant Bovino is a resident of the State of Colorado and the inventor of U.S. Patent No. 6, 977, 809 (the "'809 Patent"). The '809 Patent discloses a portable computer case that can be used on various devices. Bovino does not manufacture or sell products based on the '809 Patent but, instead, monetizes the '809 Patent through license agreements.
Sometime before August 7, 2013, counsel for Bovino purchased four Invellop products for the purpose of determining whether the Invellop products infringed the '809 Patent. The purchase allowed counsel for Bovino to conduct due diligence before filing suit. Counsel for Bovino, acting as an agent for Bovino, placed an order for the products at the Amazon.com Invellop storefront. Counsel for Bovino also paid for the products through Amazon.com. Invellop processed the order and shipped the products to counsel for Bovino. In response to Invellop's Interrogatory No. 1, Bovino listed the relevant information from that purchase, including the four Invellop products, the product descriptions, model numbers, Amazon standard identification numbers, and application for the products (such as iPad-Mini).
On August 7, 2013, Bovino sued Amazon in the United States District Court for the District of Colorado (the "Colorado litigation"), Case No. 13-cv-02111-MSK-MJW, alleging patent infringement. In Bovino's original complaint, Bovino alleged that "Defendant Amazon has infringed and is continuing to directly infringe, contribute to the infringement of, and/or induce the infringement of, at least one claim of the '809 Patent." Pl.'s Compl. Ex. B ¶ 10, Dkt. 1-2. Bovino further alleged that "[s]uch acts of infringement include, but are not limited to, Defendant Amazon's sale of the INVELLOP case cover for the New iPad, the iPad 2, the iPad 3, and the iPad mini." Id. On January 8, 2014, Bovino filed a motion for leave to file an amended complaint, which the District of Colorado granted on March 12, 2014. Case No. 13-cv-02111-MSK-MJW, Dkts. 33, 40. Bovino filed an amended complaint on March 13, 2014, alleging, in relevant part, that Defendant Amazon's acts of infringement:
include, but are not limited to, Defendant Amazon's use, sale, and/or offer for sale of cases for various versions of PC & Apple cellular phones, computers, and tablets (iPad, iPad-Mini, Microsoft Surface, Kindle Fire, ASUS MeMO Pad, Samsung Galaxy, Motorola Moto X, etc.); more specifically described and attached hereto as Exhibit 2, Spreadsheet of Accused Products by Manufacturer.
Amazon Am. Compl. ¶ 11, Case No. 13-cv-02111-MSK-MJW, Dkt. 41 (emphasis in original). Exhibit 2 of Bovino's Amended Complaint listed approximately 60 product manufacturers, including Invellop, and approximately 100 products, including four Invellop products. Amazon Am. Compl. Ex. 2 at 1-7, Case No. 13-cv-02111-MSK-MJW, Dkt. 41-2.
On January 7, 2014, Invellop filed the instant lawsuit against Bovino in the United States District Court for the District of Oregon. Bovino filed the pending motion to dismiss for lack of personal jurisdiction on February 11, 2014. The parties conducted limited jurisdictional discovery through May 23, 2014. Invellop alleges in its complaint that Bovino's allegations and conduct in the Colorado litigation "potentially make Invellop liable" to Amazon for the cost of defending Amazon in that matter. Pl.'s Compl. ¶ 18, Dkt. 1. Invellop also alleges that Bovino's filing of the Colorado litigation was done "with ...