United States District Court, D. Oregon
COLUMBIA SPORTSWEAR NORTH AMERICA, INC. and COLUMBIA SPORTSWEAR COMPANY, Plaintiffs,
VENTEX CO., LTD. and DAN MEYER, Defendants.
W. Axelrod and Nicholas F. Aldrich, Jr., Schwabe, Williamson
& Wyatt PC Of Attorneys for Plaintiffs.
E. Geringer, Klarquist Sparkman LLP, Of Attorneys for
OPINION AND ORDER
Michael H. Simon, United States District Judge.
Columbia Sportswear North America, Inc. (“CSNA”)
and Columbia Sportswear Company (“CSC”)
(collectively, “Columbia”) filed this lawsuit
against Defendants Ventex Co., Ltd. (“Ventex”)
and Dan Meyer (“Meyer”). Columbia recently
dismissed all claims against Meyer. Against Ventex, Columbia
alleges infringement of three patents, in violation of 35
U.S.C. § 101, et seq.; unfair competition in
violation of § 43(a) of the Lanham Act, 15 U.S.C. §
1125; unfair competition in violation of Oregon's
Unlawful Trade Practices Act, Or. Rev. Stat. § 646.605,
et seq.; and breach of contract. Ventex has
moved to dismiss all claims, arguing that the Court lacks
personal jurisdiction over Ventex. For the reasons that
follow, Ventex's motion is denied.
motion to dismiss for lack of personal jurisdiction under
Rule 12(b)(2) of the Federal Rules of Civil Procedure, the
plaintiff bears the burden of proving that the court's
exercise of jurisdiction is proper. See Schwarzenegger v.
Fred Martin Motor Co., 374 F.3d 797, 800 (9th Cir. 2004)
(citing Sher v. Johnson, 911 F.2d 1357, 1361 (9th
Cir. 1990)). When resolving such a motion on written
materials, rather than after an evidentiary hearing, the
court need “only inquire into whether the
plaintiff's pleadings and affidavits make a prima facie
showing of personal jurisdiction.” Id.
(quotation marks omitted) (quoting Caruth v. Int'l
Psychoanalytical Ass'n, 59 F.3d 126, 128 (9th Cir.
1995)). Although a plaintiff may not rest solely on the bare
allegations of its complaint, uncontroverted allegations must
be taken as true. Id. In addition, conflicts between
the parties over statements in affidavits must be resolved in
the plaintiff's favor. Id. (citing Am. Tel.
& Tel. Co. v. Compagnie Bruxelles Lambert, 94 F.3d
586, 588 (9th Cir. 1996) and Bancroft & Masters, Inc.
v. Augusta Nat'l Inc., 223 F.3d 1082, 1087 (9th Cir.
Circuit law governs the issue of personal jurisdiction in . .
. patent-related cases.” Deprenyl Animal Health,
Inc. v. Univ. of Toronto Innovations Found., 297 F.3d
1343, 1348 (Fed. Cir. 2002). The general standards governing
personal jurisdiction in the Ninth and Federal Circuits,
however, are virtually identical. See, e.g.,
Celgard, LLC v. SK Innovation Co., 792 F.3d 1373,
1377-78 (Fed. Cir. 2015); Elecs. for Imaging, Inc. v.
Coyle, 340 F.3d 1344, 1348-49 (Fed. Cir. 2003);
Silent Drive, Inc. v. Strong Indus., Inc., 326 F.3d
1194, 1200-01 (Fed. Cir. 2003).
the parent company of CSNA. Both corporations are organized
under the laws of the State of Oregon, and both have their
principal places of business in Portland, Oregon. CSNA owns
the patents at issue. Ventex is a foreign company based in
Seoul, South Korea. Ventex manufactures textiles for use in
clothing, including outdoor wear. Meyer is an Oregon resident
and, through his company Peak Performance Textiles, LLC, was
the sole sales representative for Ventex in the United
States. In 2010, CSC and Ventex entered into a Material
Component Supply Agreement (“Agreement”) (ECF
38). CSNA is an intended beneficiary of that Agreement.
Columbia alleges that under the Agreement, Ventex earned
millions of dollars in revenue by producing textiles for use
in Columbia products.
Agreement includes terms and conditions intended to protect
CSC's intellectual property rights, including trademarks,
patents, and copyrights. Agreement, §§ 1, 4. The
Agreement even defines “Trademarks” to include,
in addition to marks, “any other intellectual property
associated with Materials or Finished Goods, including but
not limited to all . . . patents . . . owned or licensed by
Columbia or its affiliates.” Id. at 3, §
1.16. Under the Agreement, Ventex must “only use the
Trademarks on or in connection with the Materials and only in
a manner expressly set forth in writing by Columbia.”
Id. at 4, § 4.1. The Agreement further provides
that Ventex “will not at any time directly contest . .
. the validity of any of the Trademarks.” Id.
The Agreement further requires Ventex to maintain the
confidentiality of Ventex's relationship with CSC.
Id. at 5, § 5.3. The Agreement also provides
that it will be “exclusively governed in all respects
by and interpreted in accordance with the laws of the State
of Oregon, ” that any dispute between the parties
“will be settled by binding arbitration pursuant to the
commercial rules of the American Arbitration Association,
” that any arbitration proceeding must take place in
Portland, Oregon, and that no provision will “prevent
either party from seeking interim or permanent injunctive
relief against the other in any court of competent
jurisdiction.” Id. at 13-14, § 16.6.
alleged in the First Amended Complaint (“FAC”),
in 2010 (the year the parties entered into the Agreement),
Columbia launched its “Omni-Heat® Reflective”
line of products, which “used reflective elements
positioned on the fabric in a discontinuous array . . . so as
to allow . . . moisture permeability of the base fabric while
also providing the advantages of heat reflectivity.”
FAC (ECF 26) at ¶ 20. CSNA filed patent applications for
related lines of products, including the D657, 093
(“D'093”) Design Patent, entitled “HEAT
REFLECTIVE MATERIAL.” The U.S. Patent and Trademark
Office (“PTO”) issued the D'093 Design Patent
to CSNA in April 2012. That patent features reflective
material positioned on the base fabric in evenly stacked,
to Columbia, in 2012 Ventex sought to become a manufacturer
of Columbia's Omni-Heat® fabric, which practiced the
D'093 Design Patent. Columbia declined Ventex's
request. Columbia alleges that after Columbia denied
Ventex's request, Ventex began to collaborate with Seirus
Innovative Accessories, Inc. (“Seirus”), a
California company, to develop a fabric known as HEATWAVE
(“Heatwave”). According to Columbia, Heatwave
infringed on- and was designed to compete with-fabrics using
the D'093 Design Patent. Columbia also asserts that
Meyer, Ventex's sole sales representative in the United
States, facilitated Ventex and Seirus's infringing
activities. Columbia contends that after a meeting between
Meyer and Seirus in 2012 at a trade show in Utah, Ventex
agreed to make the Heatwave fabric for Seirus. Meyer also
participated in later communications between Ventex and
Seirus, including providing Seirus with a price quote for the
Heatwave fabric. According to Columbia, Meyer also
represented Ventex at trade shows, promoting materials using
the allegedly infringing Heatwave fabric.
these initial communications between Ventex, Seirus, and
Meyer, Ventex manufactured the Heatwave fabric for Seirus,
which Seirus then incorporated into its glove liners, hats,
and socks. According to Columbia, by March 2013, Seirus had
ordered 3, 000 yards of Heatwave fabric from Ventex, and
Seirus and Ventex had entered into a vendor agreement for
that material. Columbia further alleges that Ventex knew that
the Heatwave fabric might infringe on Columbia's
D'093 Design Patent, informed Seirus about the D'093
patent, and sought legal advice about the risks of infringing
a design patent. Columbia also alleges that after Columbia
and Ventex signed their Agreement in 2010, Ventex used on its
website both the name “Columbia Sportswear” and
Columbia's trademark falsely to designate Columbia as one
of Ventex's customers.
2013, CSNA sued Seirus in federal court in the Western
District of Washington, alleging infringement of the
D'093 Design Patent. Shortly thereafter, CSNA amended its
complaint against Seirus to add two additional patents, U.S.
Patent Nos. 8, 424, 119 (“'119 Patent”) and
8, 453, 270 (“'270 Patent”). (The D'093
Design Patent, the '119 Patent, and the '270 Patent
comprise the three patents at issue in the pending lawsuit
against Ventex.) In January 2015, CSNA refiled its patent
infringement lawsuit against Seirus in federal court in the
District of Oregon, where it was assigned to United States
District Judge Marco Hernandez. In March 2016, Seirus and
CSNA filed a Joint Motion for Entry of Judgment Re U.S.
Patent D657, 093, and the Court issued a judgment of
validity. Columbia Sportswear N. Am., Inc., v. Seirus
Innovative Accessories, Inc., Case No. 3:15-cv-64-HZ (D.
Or.). CSNA also moved for partial summary judgment, asserting
that Seirus infringed on the D'093 Design Patent. In
August 2016, Judge Hernandez granted that motion against
January 2017, Ventex filed petitions for inter
partes review (“IPR”) of the two additional
Columbia patents. The PTO's Patent Trial and Appeal Board
(“PTAB”) later dismissed the petitions and
terminated the IPR proceedings for the '119 and '270
Patents. In its orders, the PTAB found that Seirus was in
privity with Ventex and that Seirus was the real party in
interest in the two IPRs.
September 2017, Judge Hernandez granted Seirus' motion to
transfer venue in Columbia's patent infringement case
against Seirus to the Southern District of California but
continued to preside over the case. Later that month, a jury
found Seirus liable for infringement of the D'093 Design
Patent based on its sales of Heatwave products. Judge
Hernandez entered judgment awarding CSNA more than $3 million
against Seirus. Columbia Sportswear N. Am., Inc. v.
Seirus Innovative Accessories, Inc., Case No.
3:17-cv-1781-HZ (S.D. Cal) (ECF 403). That case is currently
on appeal to the Federal Circuit.
case pending before this Court, Ventex moves under Rule
12(b)(2) to dismiss Columbia's FAC for lack of personal
jurisdiction. Columbia does not argue that there is general
jurisdiction over Ventex. Rather, Columbia asserts only
specific jurisdiction. Ventex argues that there is no basis
for specific jurisdiction. As discussed below, the Court
finds that it has specific personal jurisdiction over Ventex
based on Columbia's claims of patent infringement and
breach of contract. The Court also finds that it has pendant
personal jurisdiction based on Columbia's claims of
Personal Jurisdiction Generally
of the Federal Circuit governs personal jurisdiction
concerning patent-related claims. Deprenyl Animal
Health, 297 F.3d at 1348. Under Ninth Circuit law, for
all non-patent claims when no applicable federal statute
otherwise governs personal jurisdiction, the district court
applies the law of the forum state. Schwarzenegger,
374 F.3d at 800 (9th Cir. 2004) (citing Panavision
Int'l L.P. v. Toeppen, 141 F.3d 1316, 1320 (9th Cir.
1998)). Oregon's long-arm statute is co-extensive with
constitutional standards. Gray & Co. v. Firstenberg
Mach. Co., 913 F.2d 758, 760 (9th Cir. 1990) (citing Or.
R. Civ. P. 4(L)). Thus, for the non-patent claims, the Court
need only determine whether its exercise of personal
jurisdiction over a defendant would offend constitutional due
process requirements. See Schwarzenegger, 374 F.3d
at 800-01 (holding that when a state long-arm statute is
coextensive with federal due process requirements, “the
jurisdictional analysis under state law and federal due
process are the same”).
process requires that a 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.'” Int'l Shoe Co.
v. Wash., 326 U.S. 310, 316 (1945) (citations omitted).
The Supreme Court has rejected the application of
“mechanical” tests to determine personal
jurisdiction. Id. at 319; see also Burger King
Corp. v. Rudzewicz, 471 U.S. 462, 478-79 (1985)
(rejecting “mechanical tests” and
“conceptualistic . . . theories of the place of
contracting or of performance” to determine personal
jurisdiction (citations omitted)). Rather, a court should
consider the “quality and nature of the activity in
relation to the fair and orderly administration of the laws
which it was the purpose of the due process clause to
insure.” Int'l Shoe, 326 U.S. at 319.
state may exercise two forms of personal jurisdiction over a
nonresident defendant: general jurisdiction and specific
jurisdiction. Goodyear Dunlop Tires Operations, S.A. v.
Brown, 564 U.S. 915, 918-20 (2011). A court may exercise
general personal jurisdiction over a defendant whose contacts
with the forum are “continuous and systematic, ”
even if those contacts are unrelated to the plaintiff's
claims. Helicopteros Nacionales de Colombia, S.A. v.
Hall, 466 U.S. 408, 415-16 (1984). If the court lacks
general personal jurisdiction, it may nevertheless have
specific personal jurisdiction if: (1) the defendant has
certain minimum contacts with the forum state; (2) the
controversy arose out of those contacts; and (3) a
court's exercise of jurisdiction is reasonable. See
Burger King, 471 U.S. at 472-74. After a court asserts
general personal jurisdiction over a defendant, the court may
hear any claim against that defendant. Bristol-Myers
Squibb Co. v. Super. Ct. of Cal., S.F. Cty., 137 S.Ct.
1773, 1780 (2017). A plaintiff relying on ...