883 F. Supp. 2d 535
D.N.J.2012Background
- MSA owns U.S. Design Patents No. D628,444 and D628,445 for a Countertop Coffee Pod Drawer.
- Nifty Home Products manufactures and sells K-Cup Drawer units; Tiemann is a Minnesota resident and part-owner of Nifty.
- Defendants Fingerhut and Southern Refreshment Services resell the K-Cup Units online.
- MSA filed a two-count patent infringement complaint in 2011 alleging infringement of the '444 and '445 patents.
- Defendants moved to dismiss for lack of personal jurisdiction over Tiemann and to dismiss infringement claims concerning the three-drawer K-Cup Units; MSA amended the complaint (FAC) and the parties proceeded with briefing.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Personal jurisdiction over Tiemann in New Jersey | MSA contends veil-piercing extends jurisdiction over Tiemann | Tiemann lacks minimum contacts with New Jersey | Denied without prejudice; discovery needed to resolve jurisdiction |
| Infringement of the three-drawer K-Cup Units | MSA asserts triad of designs infringes the patents | Three-drawer unit does not infringe under design-patent standard | Counts asserting infringement by the three-drawer units dismissed with prejudice |
| Proper standard to assess design-patent infringement at motion to dismiss | Infringement is fact-based and not suitable for dismissal | In some cases, design-patent infringement can be decided on motion to dismiss | Court allowed dismissal where no ordinary observer could view the three-drawer units as substantially the same as the MSA designs |
| Appropriateness of veil-piercing analysis for jurisdiction | Independent basis to reach Tiemann through alter-ego theory | Need concrete minimum contacts | Undecided at this stage; discovery may inform veil-piercing inquiry |
| Effect of amended complaint on the motion to dismiss | FAC supersedes earlier complaint; motion to dismiss should be moot as to new pleadings | Motions can be considered to address amended pleading | Court treated motion as addressing the FAC; not moot; may renew on jurisdiction |
Key Cases Cited
- Autogenomics, Inc. v. Oxford Gene Tech. Ltd., 566 F.3d 1012 (Fed. Cir. 2009) (jurisdictional issue tied to patent laws; governs standard for personal jurisdiction in patent cases)
- Nuance Communications, Inc. v. Abbyy Software House, 626 F.3d 1222 (Fed. Cir. 2010) (long-arm jurisdiction analyzed for patent claims)
- Nicastro v. McIntyre Machinery America, Ltd., 399 N.J. Super. 539, 945 A.2d 92 (N.J. App. Div. 2008) (NJ long-arm reaches based on minimum contacts and due process)
- Wilson v. Paradise Village Beach Resort and Spa, 395 N.J. Super. 520, 929 A.2d 1122 (N.J. App. Div. 2007) (long-arm jurisdiction analysis in New Jersey)
- Synthes (U.S.A.) v. G.M. Dos Reis Jr. Ind. Com. de Equip. Medico, 563 F.3d 1285 (Fed. Cir. 2009) (burden-shifting framework for jurisdictional challenge)
- Touchscreen Corp. v. Bereskin & Parr, 574 F.3d 1403 (Fed. Cir. 2009) (prescribes approach when no jurisdictional discovery)
- Grayson v. Mayview State Hosp., 293 F.3d 103 (3d Cir. 2002) (amendment/dismissal standards where futile to amend)
- Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (design-patent infringement analysis; ordinary observer standard)
- Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d 1294 (Fed. Cir. 2010) (design-patent infringement standard and comparison to prior art)