United States District Court, N.D. New York
DAVID L. NOCILLY, ESQ., BOND, SCHOENECK & KING, PLLC, Syracuse, NY, Counsel for Plaintiff.
ROBERT E. PURCELL, ESQ., OFFICE OF ROBERT E. PURCELL, Syracuse, NY, Counsel for Defendants.
DECISION and ORDER
GLENN T. SUDDABY, District Judge.
Currently before the Court, in this patent action filed by ConMed Corporation ("Plaintiff") against Ioan Cosmescu and I.C. Medical, Inc. ("Defendants"), are (1) Defendant Cosmescu's motion for reconsideration of that portion the Court's Order of March 10, 2015, which denied Defendant Cosmescu's motion to dismiss, and (2) Defendant I.C. Medical, Inc.'s motion to amend the same Order to permit Defendant I.C. Medical, Inc., to seek interlocutory review by the Federal Circuit pursuant to 28 U.S.C. § 1292(b). (Dkt. Nos. 47, 48.)
After carefully considering the matter, the Court denies Defendant Cosmescu's motion for reconsideration for the reasons stated in Plaintiff's opposition memorandum of law. (Dkt. No. 53.) To those reasons the Court adds only the following analysis.
In its Order denying Defendants' motion to dismiss, the Court expressly relied on, inter alia, "the reasons set forth in Plaintiff's opposition memorandum of law...." (Dkt. No. 39.) In its memorandum of law in opposition to Defendants' motion to dismiss, Plaintiff argued that Defendants' motion should be denied for two reasons. (Dkt. No. 32.)
First, argued Plaintiff, personal jurisdiction is proper under New York's long-arm statute because, inter alia, "Defendants" transacted business in New York by entering into a covenant promising not to sue Plaintiff for infringement of a patent (specifically, the 812 Patent, which Plaintiff asserts is a direct relative of the patent at issue in this action). (Id. at 8, 10-12 [attaching pages "4, " "6, " "7" and "8" of Plf.'s Opp'n Memo. of Law] [emphasis added].) As part of that argument, Plaintiff clearly relied on the fact that Defendant Cosmescu was (1) the inventor of the 812 Patent, (2) the founder and president of Defendant I.C. Medical, Inc., when it previously sued Plaintiff, and (3) a signer of the subsequent covenant not to sue. (Dkt. No. 32, Attach. 1, at 26 [attaching Patent 812]; Dkt. No. 4, at ¶ 8 [Am. Compl.]; Dkt. No. 32, Attach. 3 [attaching settlement agreement].)
Second, argued Plaintiff, an exercise of personal jurisdiction in this action is consistent with federal due process because, in addition to entering into the aforementioned covenant, "Defendants" repeatedly sent patent-infringement letters to Plaintiff. (Dkt. No. 32, at 13 [attaching page "9" of Plf.'s Opp'n Memo. of Law] [emphasis added].) Again, as part of that argument, Plaintiff clearly relied on, inter alia, the fact that Defendant Cosmescu was, when the letters were sent, the founder and president of Defendant I.C. Medical, Inc. (Id.; Dkt. No. 4, at ¶ 8 [Am. Compl.].)
Defendant Cosmescu has not persuaded the Court that these reasons do not, under controlling law, warrant a conclusion that the Court possesses personal jurisdiction over him (much less a clear error of law or manifest injustice regarding such a conclusion).
Moreover, after carefully considering the matter, the Court denies Defendant I.C. Medical, Inc.'s motion to amend for the reasons stated in Plaintiff's opposition memorandum of law. (Dkt. No. 53.) To those reasons the Court adds only the following analysis.
In its motion, the "controlling question of law" of which Defendant I.C. Medical, Inc., seeks interlocutory review regards whether a New York federal court has personal jurisdiction over an out-of-state corporation whose only contacts with New York are (1) the sending of "a letter" to the plaintiff in New York giving notice of the plaintiff's infringement of a patent owed by the corporation, and (2) a single-page covenant not to sue entered between the parties in settlement of an earlier patent infringement lawsuit in an out-of-state federal court, "where the covenant not to sue identified only... two patents as being subject to the covenant, [and] where the patent in the New York lawsuit was a continuation of one of those two identified patents...." (Dkt. No. 48, at 2.)
For the sake of brevity, the Court will not linger on the fact that apparently three letters were sent (i.e., on September 5, 2013, September 30, 2013, and October 5, 2013), the covenant regarded "any other patent... [owned by I.C. Medical, Inc.] that [I.C. Medical, Inc.] believes the GoldVac infringes, " and the patent in the New York lawsuit was owned by Defendants at the time of the covenant and is a "direct relative" of the two patents identified in the covenant. More important is lack of basis on which the Court can conclude that there is a substantial ground for difference of opinion as to whether the contacts described by Defendant I.C. Medical, Inc., confer personal jurisdiction onto the Court.
In its memorandum of law, Defendant I.C. Medical, Inc., argues that "the Court of Appeals for the Federal Circuit has stated that sending a letter threatening patent infringement by itself is insufficient to confer personal jurisdiction." (Dkt. No. 48, Attach. 2, at 2.) In support of that argument, Defendant I.C. Medical, Inc., asserts that, in the case of Avocent Huntsville Corp. v. Aten Int'l Co., Ltd., 552 F.3d 1336, 1333 (Fed. Cir. 2008), the Federal Circuit held that "other activities" are required in addition to such letters, and explained that "[e]xamples of these 'other activities' include initiating judicial or extra-judicial enforcement within the forum, or entering into an exclusive license agreement or other undertaking which imposes enforcement obligations with a party residing or regularly doing business in the forum." (Id. ) Because it did not engage in any of the listed "other activities, " argues Defendant I.C. Medical, Inc., it did not subject itself to the personal jurisdiction of the Court. (Id. )
The problem with Defendant I.C. Medical, Inc.'s argument is the word "examples." The Federal Circuit's use of that word in Avocent meant that the list of "other activities" was not exhaustive. Indeed, based on other Federal Circuit cases, such "other activities" also include entering into an exclusive license agreement with a party residing in, or conducting business in, the forum. Breckenridge Pharm. v. Metabolite, 444 F.3d 1356, 1366 (Fed. Cir. 2006) ("[T]he defendant is subject to personal jurisdiction in the forum state by virtue of its relationship with its exclusive forum state licensee if the license agreement, for example, requires the defendant-licensor, and grants the licensee the right, to litigate infringement claims.... [T]he defendant will also be subject to personal jurisdiction in the forum state if the exclusive licensee (or licensee equivalent) with which it has established a relationship is not headquartered in the forum state, but nonetheless conducts business there."); Inamed Corp. v. Kuzmak, 249 F.3d 1356, 1362 (Fed. Cir. ...