Pension Advisory Group, Ltd. v. COUNTRY LIFE INSURANCE COMPANY
771 F. Supp. 2d 680
S.D. Tex.2011Background
- PAG and related plaintiffs brought suit in Texas state court; action removed to SDTX; claims concern trade secrets, ownership, and contracts with Country Life and Hall.
- Plaintiffs allege DGS disclosed PAG trade secrets to Country Life under confidentiality and exclusivity agreements related to Retirement Contributions Protector products.
- PAG contends patents and continuations ('419, '326, '020 applications) implicate ownership and control of product information; Country Life asserts ownership of the information.
- Country Life and Hall move to dismiss for lack of personal jurisdiction, failure to state a claim, and move to transfer venue; third party DGS counterclaims are filed.
- Court holds oral arguments; procedural posture requires repleading certain claims; grants in part/denies in part and denies transfer; strikes one mediation paragraph.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Personal jurisdiction over Hall | Hall's Texas-related acts create minimum contacts. | Hall had limited contacts; fiduciary shield excludes individual liability. | Pendent and specific jurisdiction over Hall exists; some claims dismissed against Hall; jurisdiction denied on others pending repleading. |
| Preemption under § 1338 | Claims do not hinge on patent law; not preempted. | Protest filings implicate patent-law questions; preemption applies. | Claims not preempted; not barred under § 1338; USPTO filings may be probative but do not define federal patent jurisdiction. |
| Noerr-Pennington and quasi-judicial immunity | No immunity for alleged false USPTO statements. | Statements to USPTO should be immunized under Noerr-Pennington/quasi-judicial immunity. | No Noerr-Pennington or quasi-judicial immunity shield; immunity not applicable to alleged false statements or all actions. |
| Twombly 12(b)(6) pleading sufficiency | Claims pled with detail; sufficient to survive. | Some claims lack sufficient factual pleading under Twombly; require repleading. | Breach of contract against Hall dismissed; other claims require repleading; libel/other claims largely survive for now. |
| Motion to transfer venue | Texas connection and convenience favor SDTX; transfer not warranted. | Central District of Illinois more convenient; many events/witnesses there. | Transfer denied; SDTX remains proper forum. |
Key Cases Cited
- Clemens v. McNamee, 615 F.3d 374 (5th Cir.2010) (due process limits on long-arm jurisdiction)
- Jackson v. Tanfoglio Giuseppe, S.R.L., 615 F.3d 579 (5th Cir.2010) (specific vs general jurisdiction framework)
- Seiferth v. Helicopteros Atuneros, Inc., 472 F.3d 266 (5th Cir.2006) (three-part minimum contacts test for specific jurisdiction)
- Burger King Corp. v. Rudzewicz, 471 U.S. 462 (1985) (minimum contacts and fair play analysis)
- Asahi Metal Industry Co. v. Superior Court, 480 U.S. 102 (1987) (reasonableness factors for jurisdiction)
- McFadin v. Gerber, 587 F.3d 753 (5th Cir.2010) (activities outside state causing effects in Texas support minimum contacts)
- Christianson v. Colt Industries Operating Corp., 486 U.S. 800 (1988) (articulation of § 1338 patent-jurisdiction test)
- Grable & Sons Metal Prods., Inc. v. Darue Eng'g & Mfg., 545 U.S. 308 (2005) (test for federal jurisdiction based on substantial federal issue)
- In re Enron Corp. Sec., 465 F. Supp. 2d 687 (S.D. Tex.2006) (perspective on pendent jurisdiction and related principles)