Kraken Sports, Inc. v. Easydive Di Fabio Benvenuti

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLUMBIA
KRAKEN SPORTS, INC.,
Plaintiff,
v. Civil Action No. 19-03233 (TFH)
EASYDIVE DI FABIO BENVENUTI, et al.
Defendants.
MEMORANDUM OPINION
This is a patent declaratory judgment action in which Plaintiff Kraken Sports, Inc. seeks
declarations of non-infringement and invalidity as to United States Patent No. 10,261,395.
Defendants EasyDive di Fabio Benvenuti, the owner of the patent, and Fabio Benvenuti, the
inventor of the patent, have moved to dismiss the complaint for lack of personal jurisdiction,
improper venue, and failure to state a claim. For the reasons set forth below, Defendants’ motion
to dismiss will be granted for lack of personal jurisdiction and this action will be transferred in
its entirety to the United States District Court for the Eastern District of Virginia for resolution
on the merits.
BACKGROUND
Plaintiff Kraken Sports, Inc. (“Plaintiff” or “Kraken”) is a Canadian corporation with its
principal place of business in London, Ontario, Canada. Kraken develops, manufactures, and
sells “photography, and videography accessories for divers, including diving lights and diving
cases for still cameras, video cameras and smart phones.” Compl. ¶ 9. Defendant EasyDive di
Fabio Benvenuti (“EasyDive”) is also engaged in the business of manufacturing and selling
photography and videography equipment for divers. Id. at ¶ 10. Defendant Fabio Benvenuti
resides in Cervia, Italy and is the sole owner of EasyDive, an unincorporated entity with its sole
place of business in Cervia, Italy. Id. at ¶ 2-3.
United States Patent No. 10,261,395 (“the ‘395 Patent”) was issued to EasyDive on April
16, 2019. Id. at ¶ 13. The ‘395 Patent is “Underwater Case for Digital Cameras and
Videocameras” and identifies Fabio Benvenuti as the sole inventor. Id. at ¶¶ 3, 13. In August
2019, counsel for EasyDive sent numerous cease-and-desist letters together with draft complaints
for patent infringement to Kraken, Kraken’s customers, and Kraken’s supplier asserting that one
of Plaintiff's products, the "Kraken Smart Housing" infringed on the ‘395 Patent. Compl. ¶ 5, 23;
Opp’n at 14, 19; Opp’n Ex. C. Kraken alleges that such letters have caused certain customers to
return its product or to question continued sales. Compl. ¶ 5.
On October 28, 2019, Kraken filed the instant action seeking a declaration that it does not
infringe on any valid claim of the ‘395 Patent and that the ‘395 Patent is invalid and
unenforceable. Compl. at 1. Kraken also alleges that EasyDive is liable for false marking under
35 U.S.C. § 292. Id.DISCUSSION
I. Legal Standard
District courts apply Federal Circuit law in reviewing a motion to dismiss pursuant to
Federal Rule of Civil Procedure 12(b)(2) in a patent law case. Deprenyl Animal Health, Inc. v.
Univ. of Toronto Innovations Found., 297 F.3d 1343, 1348 (Fed. Cir. 2002) (“Federal Circuit
law governs the issue of personal jurisdiction in . . . patent-related case[s].”). In the absence of
an evidentiary hearing,
[a] plaintiff need only make a prima facie showing of jurisdiction to survive a
motion to dismiss. To make that showing, [plaintiff] need only demonstrate
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facts that, if true, would support jurisdiction over the Defendants. Unless
directly contravened, [plaintiff’s] version of the facts is taken as true, and
conflicts between the facts contained in declarations submitted by the two sides
must be resolved in [plaintiff’s] favor for purposes of deciding whether a prima
facie case for personal jurisdiction exists.
Campbell Pet. Co. v. Miale, 542 F.3d 879, 888 (Fed. Cir. 2008) (quoting Mattel, Inc. v. Greiner
& Hausser GmbH, 354 F.3d 857 (9th Cir. 2003)).
Under Federal Circuit law, “[p]ersonal jurisdiction over an out-of-state defendant is
appropriate if the relevant state’s long-arm statute permits the exercise of jurisdiction without
violating federal due process.” 3D Sys., Inc. v. Aarotech Labs., Inc., 160 F.3d 1373, 1376-77
(Fed. Cir. 1998). The D.C. long-arm statute is coextensive with the limits of due process,
Helmer v. Doletskaya, 393 F.3d 201, 205 (D.C. Cir. 2004), so “the statutory and constitutional
jurisdictional questions, which are usually distinct, merge into a single inquiry,” United States v.
Ferrara, 54 F.3d 825, 828 (D.C. Cir. 1995). Accordingly, the “only inquiry is whether or not
exercising personal jurisdiction over the defendants . . . comports with federal due process.” 3D
Systems, 160 F.3d at 1377.
II. Personal Jurisdiction
a. General Personal Jurisdiction
Although Kraken alleges in its Complaint that “Defendants are foreign nationals and are
thus subject to general and specific personal jurisdiction in this judicial district,” Compl. ¶ 7, in
its Opposition, Plaintiff appears to concede that the Court does not have general personal
jurisdiction over Defendants. See Opp’n at 5-7. Plaintiff is correct. General jurisdiction arises
only where a defendant’s contacts with the forum state qualify as “continuous and systematic
general business contacts.” Autogenomics, Inc. v. Oxford Gene Tech. Ltd., 566 F.3d 1012, 1017
(Fed. Cir. 2009) (quoting Helicopteros Nacionales de Colombia, S.A. v. Hall, 466 U.S. 408, 416
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(1984)). This is a “fairly high” standard that requires more than “sporadic and insubstantial
contacts with the forum state”. Id. at 1017-18 (quoting Campbell Pet Co. v. Miale, 542 F.3d 879,
884 (Fed. Cir. 2008)).
Here, Plaintiff’s complaint has not alleged any direct contacts with this forum, much less
contacts sufficient to confer general jurisdiction. EasyDive is an Italian company and Mr.
Benvenuti is a resident of Italy who has never traveled to Washington, D.C. Benvenuti Decl. at
2. Although Kraken alleges that EasyDive has sent letters and communications to Plaintiff,
Plaintiff’s customers, and Plaintiff’s supplier, Kraken does not allege that any of those
communications were directed to or received in this forum. Consequently, as Plaintiff seemingly
acknowledges, this Court does not have general personal jurisdiction over either Defendant.
b. Specific Personal Jurisdiction
Plaintiff’s core contention is that this Court has personal jurisdiction over Defendants
pursuant to Federal Rule of Civil Procedure 4(k)(2). That rule states:
For a claim that arises under federal law, serving a summons or filing a waiver of service
establishes personal jurisdiction over a defendant if:
(A) the defendant is not subject to jurisdiction in any state's courts of general jurisdiction;
and
(B) exercising jurisdiction is consistent with the United States Constitution and laws.
Fed. R. Civ. P. 4(k)(2).
As explained by the Federal Circuit, Rule 4(k)(2) allows a district court to
exercise personal jurisdiction even if the defendant's contacts with the forum state
would not support jurisdiction under that state's long-arm statute, as long as (1)
the plaintiff's claim arises under federal law, (2) the defendant is not subject to
personal jurisdiction in the courts of any state, and (3) the exercise of jurisdiction
satisfies due process requirements.
Merial Ltd. v. Cipla Ltd., 681 F.3d 1283, 1294 (Fed. Cir. 2012).
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The rule’s first prong is straight forward and uncontested. Kraken’s claim arises under
federal law.
The second condition for application of Rule 4(k)(2), known as the “negation
requirement,” is that “the defendant not be subject to personal jurisdiction in any state's courts of
general jurisdiction.” Synthes (U.S.A.) v. G.M. Dos Reis Jr. Ind. Com de Equip. Medico, 563
F.3d 1285, 1294 (Fed. Cir. 2009). Ordinarily, the plaintiff bears the burden of establishing
personal jurisdiction. However, “in the context of Rule 4(k)(2) that general proposition would
saddle the plaintiff with an extraordinary challenge in ‘proving a negative many times over,’ that
is, demonstrating that the defendant is not subject to jurisdiction in each of the fifty states”
Merial Ltd., 681 F.3d at 1294 (quoting Touchcom, Inc. v. Bereskin & Parr, 574 F.3d 1403, 1413
(Fed. Cir. 2009)). Courts have therefore adopted a burden-shifting mechanism whereby Rule
4(k)(2) applies only when “defendant contends that he cannot be sued in the forum state and
refuses to identify any other where suit is possible” Mwani v. bin Laden, 417 F.3d 1, 11 (D.C.
Cir. 2005) (quoting ISI Int'l, Inc. v. Borden Ladner Gervais LLP, 256 F.3d 548, 552 (7th Cir.
2001)). Therefore, “[a] defendant who wants to preclude use of Rule 4(k)(2) has only to name
some other state in which the suit could proceed.” Id.A defendant is, however, required to go beyond simply naming and consenting to the
jurisdiction of another state. Merial Ltd., 681 F.3d at 1294. To defeat Rule 4(k)(2), a defendant
must “identify[] a forum where the plaintiff could have brought suit—a forum where jurisdiction
would have been proper at the time of filing, regardless of consent.” Id.
Here, the Defendants have (1) explicitly consented to the jurisdiction of the United States
District Court for the Eastern District of Virginia and (2) correctly stated that Kraken could have
originally brought suit in that district pursuant to 35 U.S.C. § 293. Def’s Reply at 6 [ECF. No. 8].
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Under 35 U.S.C. § 293, if a nonresident patentee has not designated in writing with the U.S.
Patent and Trademark Office a U.S. resident to receive service of process or notice of
proceedings affecting the patent, “the United States District Court for the Eastern District of
Virginia shall have jurisdiction and …shall have the same jurisdiction to take any action
respecting the patent or rights thereunder that it would have if the patentee were personally
within the jurisdiction of the court.” 35 U.S.C. § 293. The parties agree that Defendant Benvenuti
is the sole owner of the ‘395 patent and a foreign national. Kraken has not alleged and there is no
evidence that suggests Mr. Benventui has designated a U.S. resident to accept service with the
Patent and Trademark Office. Accordingly, under 35 U.S.C. § 293, the Eastern District of
Virginia, may properly exercise personal jurisdiction over Mr. Benvenuti, and Kraken could
have originally brought this suit in that district.
In sum, that Defendants have (1) consented to the jurisdiction in the Eastern District of
Virginia and (2) properly identified that forum as one in which Kraken could have originally
brought suit precludes application of Rule 4(k)(2). Accordingly, this Court does not have
personal jurisdiction over Defendants. Because Kraken cannot satisfy the negation requirement,
the Court need not analyze whether the exercise of jurisdiction comports with due process
requirements.
III. Transfer
If a court determines that it lacks jurisdiction over a civil action, “the court shall, if it is in
the interest of justice, transfer such action ... to any other such court in which the action or appeal
could have been brought at the time it was filed or noticed.” 28 U.S.C. § 1631; see also
Leitner-Wise v. Clark, No. CV 18-771 (BAH), 2018 WL 6787999, at *7 (D.D.C. Dec. 26, 2018).
Although the party requesting transfer ordinarily bears the burden of establishing that transfer is
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proper, the “[t]he law of this Circuit also holds that sua sponte transfers pursuant to 28 U.S.C. §
1631 are committed to the discretion of the District Court.” Jovanovic v. US-Algeria Bus.
Council, 561 F. Supp. 2d 103, 112, n.4 (D.D.C. 2008) (citing Hill v. U.S. Air Force, 795 F.2d
1067, 1070 (D.C. Cir. 1986)); see also Wright v. Sheehy Ford of Marlow Heights, Inc., No. CV
19-2365 (TJK), 2020 WL 977974, at *3 n.7 (D.D.C. Feb. 28, 2020) (noting that “the D.C. Circuit
has strongly suggested that a district court must sua sponte transfer a case over which it lacks
personal jurisdiction to a court where jurisdiction would be proper when doing so would be in
the interest of justice.”).
Although Plaintiff has not raised the prospect of transfer, EasyDive contends that it
would be improper for this Court to transfer the case to the Eastern District of Virginia. Def’s
Reply at 13. However, it is well settled in this Circuit that transfer is preferable to dismissal and
“where a court finds that it lacks jurisdiction, it must transfer such action to the proper court, if
such transfer is in the interest of justice.” Ingersoll-Rand Co. v. United States, 780 F.2d 74, 80
(D.C. Cir. 1985); see also Sinclair v. Kleindienst, 711 F.2d 291, 293 (D.C. Cir. 1983) (discussing
the Supreme Court’s preference for transfer in cases where personal jurisdiction presents an
“obstacle…to a prompt adjudication on the merits in the forum where originally brought”);
Gather Workspaces LLC v. Gathering Spot, LLC, No. CV 19-2669 (RC), 2020 WL 6118439, at
*10 (D.D.C. Oct. 16, 2020) (“[T]he law of this Circuit suggests that when a district court
lacks personal jurisdiction over a case, transfer to a court where jurisdiction is proper
is preferred, and perhaps even required, to dismissing the case.”); Leitner-Wise, 2018 WL
6787999, at *7 (noting that “transfers, when possible, are preferred to outright dismissals”).
When evaluating whether a transfer is in the interest of justice, “courts
consider, inter alia, whether the claims would be time-barred upon refiling, whether transfer
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would prejudice the defendants' position on the merits, and whether transfer would save the
plaintiff the time and expense of refiling in a new district.” Does 1-144 v. Chiquita Brands Int'l,
Inc., 285 F. Supp. 3d 228, 235 (D.D.C. 2018).
In this case, the Court finds that the interests of justice weigh towards transferring the
case to the Eastern District of Virginia. First, the Defendants have explicitly consented to the
Eastern District. Second, as explained above, as a foreign patentee Mr. Benvenuti is statutorily
subject to the jurisdiction of the Eastern District of Virginia pursuant to 35 U.S.C. § 293. Third,
transfer would not prejudice the Defendants’ position on the merits as Defendants will still be
able to pursue their claim that the Complaint fails to state a claim for which relief can be granted.
See Leitner-Wise, 2018 WL 6787999, at *7; Sinclair, 711 F.2d at 293, n.2 (transfer was in the
interest of justice because “transfer would not prejudice the defendants’ position on the merits”
as “[t]he defendants would not be barred from raising any defense or submitting any motions in
the transferee court which would have been proper in the transferor court.”). Finally, neither
party will be inconvenienced given the Eastern District of Virginia’s proximity to this district.
See Leitner-Wise, 2018 WL 6787999, at *7 (transfer was in the interest of justice because
“neither party will be substantially inconvenienced by the move from this Court to the Eastern
District of Virginia, which is located just a few miles away.”)
For the reasons stated above, the Court finds that transferring this case to the Eastern
District of Virginia, which may properly exercise personal jurisdiction over defendants, serves
the interests of justice.
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CONCLUSION
For the foregoing reasons, the Court finds that it lacks personal jurisdiction over
Defendants. The Court finds, however, that the United States District Court for the Eastern
District of Virginia is an appropriate venue for this action, has subject matter jurisdiction over
Plaintiff’s claims, and has personal jurisdiction over Defendants. Pursuant to 28 U.S.C. § 1631,
this action shall be transferred to the United States District Court for the Eastern District of
Virginia.
An appropriate order accompanies this opinion.
March 24, 2021
_______________________ _______
Thomas F. Hogan
SENIOR UNITED STATES DISTRICT JUDGE
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