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PIECZENIK v. CAMBRIDGE ANTIBODY TECHNOLOGY GROUP

United States District Court, S.D. New York


March 16, 2004.

GEORGE PIECZENIK, Plaintiff, -against-, CAMBRIDGE ANTIBODY TECHNOLOGY GROUP, DOMANUS, MEDICAL RESEARCH COUNCIL-LABORATORY OF MOLECULAR BIOLOGY, THE COMMISSIONER OF PATENTS AND TRADEMARKS OF THE UNITED STATES PATENT OFFICE, AN AGENCY OF THE DEPARTMENT OF COMMERCE, and THE COMMISSIONER OF FOOD AND DRUGS, Defendants

The opinion of the court was delivered by: SHIRA SCHEINDLIN, District Judge

OPINION AND ORDER

Dr. George Pieczenik, appearing pro se, brings this action against multiple defendants, alleging patent infringement, patent invalidity, and Racketeer Influenced and Corrupt Organizations ("RICO") claims.*fn1 Defendants Domantis Inc. and Cambridge Antibody Technology Group plc ("CAT") (collectively "defendants") now move to dismiss the action against them for lack of personal Page 2 jurisdiction.*fn2 In the alternative, defendants move to dismiss the action for failure to state a claim.*fn3 Pieczenik counters with a series of papers styled "Cross Motions," seeking dismissal of defendants' motions citing their "failure to comply with Local Rules 12.1 and S6.2."*fn4 For the reasons that follow, defendants' motions to dismiss for lack of personal jurisdiction are granted and Pieczenik's cross motions are denied.

 I. FACTS

  A. The Moving Defendants Page 3 Domantis Inc. is a Delaware corporation that employs four people and has its only office in Cambridge, Massachusetts.*fn5 Domantis Inc. is a subsidiary of Domantis Limited, which is organized under the laws of the United Kingdom.*fn6 CAT is an English company, with its headquarters and principal place of business in Cambridge, England.*fn7

  B. Jurisdictional Allegations

  1. Domantis Inc.

  Pieczenik alleges that Domantis Inc. licenses rights under its phage display patents in "New York, the United States, and the world," thereby Page 4 infringing and contributing to infringement of his `363 and `448 patents.*fn8 Domantis Inc. counters that it does not "engage in any research or licensing activities in New York."*fn9

  2. CAT

  a. License Agreements

  Pieczenik alleges that CAT, like Domantis Inc., infringes and contributes to the infringement of his patents by licensing rights in "New York, the United States, and the world."*fn10 CAT identifies several license agreements that it has with New York entities: (1) a 1995 license and royalty agreement with Pfizer Inc., "a Delaware corporation that has an address in New York"; (2) a 1999 Page 5 research and licensing agreement with G.D. Searle & Co., an Illinois company that was eventually acquired by Pfizer Inc.; and (3) a 1996 agreement with New York Medical College in Valhalla, New York.*fn11 None of these agreements were negotiated in New York or are governed by New York law, and only the third agreement required CAT to send materials and/or technology to New York.*fn12 CAT also states that it transferred a therapeutic product candidate — Trabio(tm) — to two locations in New York, for use in clinical trials.*fn13

  b. Other Contacts

  Pieczenik also offers many general jurisdictional allegations, scattered throughout his various submissions to the Court. First, he asserts that CAT is a defendant in a lawsuit brought by a former shareholder, Continental Venture Capital Limited ("CVC"), in New York state court.*fn14 Second, he points to the fact that CAT listed a New York investment banker as a "contact person for the Subscription Agreement for raising money in both its initial subscription Page 6 offering to the present."*fn15 Third, CAT has purportedly entered into contracts with companies and individuals, located or doing business in New York, such as Dyax and Bristol-Myers Squibb."*fn16 Fourth, Genzyme Corp., a company with "a continuous presence in Yonkers, New York as Genzyme Genetics," purportedly owns 11.28% of CAT.*fn17 Fifth, CAT maintains its American Depository Receipts ("ADRs") in the Bank of New York, and is "required to continually monitor those assets either by phone, internet and/or mail."*fn18 Aggregating the foregoing allegations, Pieczenik concludes that "[t]he bacteriophage that CAT uses comes from NY, the ideas come from New Yorker, the legal solutions come from New York. The only thing not from New York at CAT is the chutzpah and the accent."*fn19 Page 7

 II. APPLICABLE LAW

  A. Local Rules 12.1 and 56.2

  Rule 12.1 of the Local Rules of the United States District Courts for the Southern and Eastern Districts> of New York provides that "[a] represented party moving to dismiss . . . against a party proceeding pro se, who refers in support of the motion to matters outside the pleadings as described in Federal Rule of Civil Procedure 12(b) . . ., shall serve and file the notice required by Local Civil Rule 56.2 at the time the motion is served." Federal Rule of Civil Procedure 12(b), in turn, references "matters outside the pleadings" only in the context of "a motion asserting the defense numbered (6) to dismiss for failure of the pleading to state a claim upon which relief can be granted."*fn20 Local Rule 56.2 provides that "[a]ny represented party moving for summary judgment against a party proceeding pro se shall serve and file as a separate document, together with the papers in support of a motion, a "Notice to Pro Se Litigant Opposing Motion For Summary Judgment" in the form indicated [in the rule]." Page 8

  Local Rule 12.1, read in conjunction with Rule 12(b) and Local Rule 56.2, requires that a represented party moving for summary judgment against a pro se litigant apprise that litigant of the consequences of failing to respond to the motion. Local Rule 12.1 is intended to satisfy the prerequisites in this Circuit for granting a motion for summary judgment in a case involving a pro se litigant. Specifically, a court may not grant a summary judgment motion where one of the litigants is unrepresented unless: "(1) the court apprises the pro se litigant of the consequences of failing to respond to the motion, (2) an opposing party has already provided the litigant with the requisite notice, or (3) it is clear that the litigant understands `the nature and consequences of a summary judgment motion.'"*fn21

  B. Personal Jurisdiction

  Inasmuch as "[t]his case relates to the infringement [and invalidity] of patents [it] is [] governed by the law of the Federal Circuit."*fn22 "When determining Page 9 a personal jurisdiction case under Federal Circuit law, [a court] must first apply the state long — arm statute and then determine whether asserting jurisdiction would violate federal due process."*fn23 Because the Federal Circuit's approach to evaluating personal jurisdiction is consistent with that of the Second Circuit, I will weigh the jurisdictional issues relating to Pieczenik's patent claims under the precedents of state and federal courts in this Circuit.*fn24

  1. Legal Standard

  Upon motion, a court is obligated to dismiss an action against a defendant over which it has no personal jurisdiction.*fn25 A plaintiff bears the ultimate burden of establishing, by a preponderance of the evidence, that the court has jurisdiction over the defendant.*fn26 However, "[p]rior to discovery, a plaintiff challenged by a jurisdiction testing motion may defeat the motion by pleading in good faith . . . legally sufficient allegations of jurisdiction, i.e., by making a prima Page 10 facie showing of jurisdiction."*fn27 A plaintiff "can make this showing through his own affidavits and supporting materials[,] containing an averment of facts that, if credited . . ., would suffice to establish jurisdiction over the defendant."*fn28 Thus, a court may consider materials outside the pleadings,*fn29 but must credit the plaintiffs averments of jurisdictional facts as true.*fn30 "[W]here the issue is addressed on affidavits, all allegations are construed in the light most favorable to the plaintiff and doubts are resolved in the plaintiff's favor, notwithstanding a controverting presentation by the moving party."*fn31

  The determination of whether a federal court has personal jurisdiction over a defendant is a two — step process. First, the court must determine whether the plaintiff has shown that the defendant is subject to personal jurisdiction under Page 11 the forum state's laws.*fn32 Second, the court must evaluate whether its assertion of jurisdiction pursuant to the forum state's laws comports with the requirements of due process.*fn33

  2. Personal Jurisdiction in New York*fn34 Page 12

  a. Section 301

  Under New York law, a foreign corporation can be sued for all purposes if it is present or "doing business" in the state.*fn35 Under this test, "a foreign corporation is amenable to suit in New York if it is `engaged in such a continuous and systematic course' of `doing business' here as to warrant a finding of its `presence' in this jurisdiction."*fn36 That is, a "corporation is `doing business' and is therefore `present' in New York and subject to personal jurisdiction with respect to any cause of action . . . if it does business in New York `not occasionally or casually, but with a fair measure of permanence and continuity.'"*fn37 "The doing business standard is a stringent one because a corporation which is amenable to the Court's general jurisdiction may be sued in New York on causes of action wholly unrelated to acts done in New York."*fn38

  To determine whether a foreign corporation is doing business in New Page 13 York, courts have focused on a traditional set of indicia, assessing whether the company: (1) has an office in the state; (2) has any bank accounts or other property in the state; (3) has a phone listing in the state; (4) does public relations work there; and (5) has individuals permanently located in the state to promote its interests.*fn39 However, these factors are only intended to provide guidance — they do not amount to a "formula" for testing jurisdiction. As the Second Circuit has noted, "There is no talismanic significance to any one contact or set of contacts that a defendant may have with a forum state; courts should assess the defendant's contacts as a whole."*fn40

  b. Section 302(a)(1)

  Under section 302(a)(1) of New York's long — arm statute,*fn41 a court may exercise personal jurisdiction over a nondomiciliary if "the nondomiciliary [] Page 14 transact[s] business within the state, [and] the claim against the nondomiciliary [] arise[s] out of that business activity."*fn42 A nondomiciliary "transacts business" in New York if it "purposefully avails [itself] of the privilege of conducting activities within New York, thus invoking the benefits and protections of its laws."*fn43 A court's determination of whether a defendant "transacts business" in New York is based on an assessment of the sum of the defendant's activities.*fn44

  Where the cause of action is based on a contractual relationship, courts in the Second Circuit employ the following factors to evaluate whether a defendant is "transacting business" in New York:

  (1) whether the defendant has an on — going contractual Page 15 relationship with a New York corporation; (2) whether the contract was negotiated or executed in New York and whether, after executing a contract with a New York business, the defendant has visited New York for the purpose of meeting with parties to the contract regarding the relationship; (3) what the choice — of — law clause is in any such contract; and (4) whether the contract requires notices and payments to be sent into the forum state or requires supervision by the corporation in the forum state.*fn45

 This list of factors is not exhaustive, and a court's ultimate determination is based on a totality of the circumstances.*fn46 However, as evidenced by the preceding factors, "the mere existence of a contract with a New York corporation is not sufficient to constitute the transaction of business under section [302(a)(1)] of the CPLR."*fn47 In particular, "the grant of licensing rights to a New York corporation does not constitute the transaction of business within the meaning of the New York long — arm statute."*fn48 Thus, where a foreign defendant enters into a licensing agreement with a New York company, but lacks any other contacts with New York relating to that contract, the grant of licensing rights alone cannot serve as Page 16 the basis for jurisdiction under section 302(a)(1).*fn49

 III. DISCUSSION

  A. Pieczenik's Cross Motions

  I first address Pieczenik's contention that defendants' motions should be dismissed because of their failure to comply with Local Rules 12.1 and 56.2. Pieczenik initially made this argument in his letter to the Court dated December 27, and reiterated his concerns during the December 30, 2003 conference, adding that they could not remedy their alleged failure to comply because the "time [had] passed."*fn50 During that conference, I explained to Pieczenik that the purpose of the rule is to provide notice to pro se litigants and ensure that they are aware of the consequences of failing to respond to a motion. When Pieczenik responded that he "hop[ed] to save [himself] a lot of trouble," by prevailing on a technicality, he was clearly informed that his argument lacked merit.*fn51 Moreover, I formally notified Pieczenik of his rights in a December 31 Order,*fn52 even though (1) Local Rules 12.1 and 56.1 do not actually govern the motions at issue and (2) Pieczenik Page 17 appeared to already know of the consequences, should he fail to respond.*fn53 In light of the December conference and the consequent Order, Pieczenik's decision to reargue this issue in his subsequent submissions to the Court is baffling. However, because he cross moves on the basis of the Local Rules, it is necessary to briefly revisit the issue once more. In short, because Local Rule 12.1 does not apply to the motions at issue and because, even if it did, Pieczenik was notified of his rights, his cross — motions for dismissal on the basis of Local Rules 12.1 and 56.2 are denied.

  B. Motion to Dismiss for Lack of Personal Jurisdiction

  1. Domantis Inc.

  a. Section 301

  As an initial matter, I note that Pieczenik fails to allege, and Domantis Page 18 Inc. appears to lack, all of the traditional indicia associated with "doing business" in New York. Specifically, Domantis Inc. is not alleged to maintain a New York office, have any property or a phone listing in the state, conduct public relations work in New York, or have individuals located in the state to promote its interests. Although failure to allege these facts, by itself, does not mean that jurisdiction under section 301 is lacking, Pieczenik fails to provide any basis upon which to infer that Domantis Inc. is "doing business" in New York. Even if true, Pieczenik's sole jurisdictional allegation regarding Domantis Inc. — that it "licenses rights under its patents in New York, the United States and the world"*fn54 — does not suggest that Domantis Inc. conducts business in New York with any regularity, and certainly not on a systematic and continuous basis. As such, Pieczenik offers no basis upon which this Court can exercise jurisdiction over Domantis Inc. under section 301.

  b. Section 302(a)(1)

  i. Patent Infringement

  Pieczenik has also failed to allege facts sufficient to support a finding of jurisdiction under section 302(a)(1) with respect to Pieczenik's patent Page 19 infringement claims.*fn55 Pieczenik's sole allegation linking Domantis Inc. to the forum state is that it licenses rights under its patents in New York and that by so doing, infringes or contributes to the infringement of his patents.*fn56 Notably, Domantis Inc. offers a sworn declaration stating that it does not engage in any licensing activities in New York.*fn57 Moreover, even crediting Pieczenik's allegation as true, the Federal Circuit has advised that "the grant of licensing rights to a New York corporation does not constitute the transaction of business within the meaning of the New York long — arm statute."*fn58 Where the only allegation linking Domantis Inc. to New York is a vague statement that Domantis Inc. licenses rights throughout the world, including New York, it cannot provide the basis for jurisdiction under section 302(a)(1).

  ii. RICO Page 20

  Pieczenik submits that the Medical Research Council Laboratory of Molecular Biology, CAT, Dyax Corp., and Domantis Inc. colluded to "give the impression of Dyax being more than a `virtual' patent licensing company."*fn59 Pieczenik further asserts that certain unidentified defendants committed mail fraud,*fn60 and that "[t]o the extent that communications were had with potential investors and pharmaceutical houses over . . . [Domantis Inc.'s] telephone [number] the foregoing also constituted wire fraud within the meaning of 18 U.S.C. § 1343."*fn61 But he fails to allege any facts suggesting that a connection exists between New York and Domantis Inc. regarding this collusion. Absent any contacts between Domantis Inc. and the forum state, this Court lacks personal jurisdiction over Domantis Inc. as to the RICO claims.

  2. CAT

  a. Section 301

  The majority of Pieczenik's jurisdictional allegations are unrelated to his claims against CAT. Therefore, at best, these allegations can only support a finding of jurisdiction under section 301. Apparently opting for the "scatter — shot" Page 21 approach to jurisdictional pleading, Pieczenik argues that this Court can exercise general jurisdiction over CAT based on the following: (1) pending state court litigation brought against CAT by CVC; (2) CAT's listing of a New York investment banker as a contact person for the Subscription Agreement purportedly at issue in the CVC litigation; (3) CAT's designation of the Secretary of State of New York to receive process of service; (4) CAT's entry into contracts with New York businesses; (5) 11.28% ownership of CAT by a New York company; and (6) CAT's maintenance of ADRs in the Bank of New York. Notably, Pieczenik does not allege that CAT has any of the traditional indicia of "doing business" in New York and CAT specifically states that it has no facilities, operations, employees, assets or bank accounts in New York.*fn62

  Pieczenik's allegations fail to satisfy the stringent "doing business" standard of section 301 because, even when aggregated, they do not suggest that CAT is doing business in New York on a systematic and continuous basis. Each of these allegations merits only brief discussion. First, CVC's lawsuit against CAT is based upon an agreement executed between those parties — Although Pieczenik argues that this is significant because "CAT has always had the `intent' to use the New York Courts to resolve it's [sic] legal issues arising from its Page 22 creation,"*fn63 a single agreement giving rise to litigation does not evidence continuous contact with New York. Second, CAT's listing of a non — CAT employee as a contact person on the CVC Subscription Agreement also fails to suggest that CAT is "present" in New York for purposes of section 301. Third, Pieczenik's argument that CAT enters into contracts with New York businesses, such as Dyax Corp. and Bristol-Myers Squibb, is flawed in several ways.*fn64 As Pieczenik's ongoing litigation against Dyax Corp. has demonstrated, Dyax Corp. is neither located nor does business in New York*fn65 and CAT has submitted a sworn declaration stating that it has not entered into any license agreements with Bristol-Myers Squibb.*fn66 Additionally, even if CAT enters into contracts with other, unnamed New York businesses, he avers no facts to suggest that these contracts are sufficiently significant in volume and frequency to constitute "doing business" in New York. As such these alleged "contracts" cannot support a finding of jurisdiction over CAT pursuant to section 301. Fourth, allegations of minority ownership unaccompanied by averments suggesting that CAT is a mere Page 23 department or alter ego of Genzyme Corporation render Genzyme Corp.'s purported contacts with New York, if they exist, irrelevant for jurisdictional purposes.*fn67 Fifth, CAT's designation of the Bank of New York as a depository for its ADRs cannot support a finding of general jurisdiction under New York law.*fn68 Accordingly, there is no basis upon which to exercise jurisdiction over CAT under section 301.

  b. Section 302(a)(1) Page 24

  As a threshold matter, I note that Pieczenik appears to have withdrawn his RICO claims against CAT and thus, I do not consider whether jurisdiction is proper under section 302(a)(1) as to the RICO claims.*fn69 As for his patent infringement claims, Pieczenik appears to premise his jurisdictional argument on the contracts between CAT and companies either located in and/or conducting business in New York.*fn70 But he fails adequately to allege that: (1) CAT transacts business in New York and (2) this transaction of business bears a nexus to his claims of patent infringement.

  First, he does not aver facts supporting a finding that CAT transacts business in the forum state. For instance, he does not allege that any of these contracts were negotiated or executed in New York. To the contrary, CAT states that these contracts were negotiated and executed by CAT from England.*fn71 Nor does he submit that any of the contracts had a choice — of — law clause providing that Page 25 the laws of New York would govern contract interpretation and/or disputes or that any of the contracts between CAT and New York entities require notices or payments be sent into the forum state or require supervision by CAT in New York. Indeed, the only averment that Pieczenik makes that even hints at CAT's transaction of business pursuant to one of these contracts is his submission that CAT has a "continuous research and licensing agreement with Pfizer."*fn72 However, this allegation, by itself, cannot establish a prima facie showing that there is jurisdiction over CAT in New York.

  Second, even if Pieczenik had adequately averred facts suggesting that this Court could exercise jurisdiction over CAT, he has not properly alleged that there is any nexus between these licensing agreements and his patent claims. Accordingly, he has failed to establish a prima facie showing that jurisdiction over CAT in New York may be properly exercised under section 302(a)(1). Page 26

 IV. CONCLUSION

  For the reasons set forth above, defendants' motions to dismiss for lack of personal jurisdiction are granted and Pieczenik's cross motions are denied. The Clerk of the Court is directed to close these motions [numbers 63,69, and 72 on the docket sheet].

  SO ORDERED.


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