blackbird tech llc v. sakka’s stores, inc., et al., c.a. no. 14-1256-gms (d. del. july 21, 2015)

8/20/2019 Blackbird Tech LLC v. Sakka’s Stores, Inc., et al., C.A. No. 14-1256-GMS (D. Del. July 21, 2015).

1/5

IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF DELAWARE

BLACKBIRD TECH LLC d/b/a

BLACKBIRD TECHNOLOGIES,

Plaintiff,

V

SAKKA S STORES, iNC.,

Defendant.



Plaintiff,

V

MODA LATINA, LLC d/b/a LEONISA,

Defendant.



Plaintiff,

v

. ORION MANUFACTURING, INC. d/b/a

VEDETTE SHAPEWEAR,

Defendants.

.

Civil Action No. 14-1256-GMS




2/5

OR ER

WHEREAS, on October 1 2014, the plaintiff Blackbird Tech LLC d/b/a Blackbird

Technologies ( Blackbird ) filed individual patent infringement lawsuits against defendants

Sakka's Stores, Inc. ( SSI ) (C.A. 14-1256-GMS, D.I. 1); Moda Latina, LLC d/b/a Leonisa

( Leonisa ) (C.A. 14-1258-GMS, D.I. 1); and Orion Manufacturing, Inc. d/b/a Vedette

Shapewear ( Orion ) (C.A. 14-1262-GMS, D.I. 1.) Blackbird alleges that each of the defendants

infringes U.S. Patent No. 7,081,036;

WHEREAS, presently before the court are SSI's, Leonisa's, and Orion's individual

motions to dismiss for lack

of

personal jurisdiction or, alternatively, to transfer venue. (C.A. 14-

1256-GMS, D.I. 12; C.A. 14-1258-GMS, D.I. 11; C.A. 14-1262-GMS, D.I. 7.)

Personal jurisdiction is derived from two separate sources: state statutory law and U.S.

constitutional due process. named Corp. v Kuzmak, ·249 F.3d 1356, 1359-60 (Fed. Cir. 2001).

In responding to the motions, Blackbird maintains that the Delaware long-arm statute is satisfied

for each

of

the defendants under a theory·

of

dual jurisdiction.

See Belden Techs., Inc.

v S

Corp., 829 F. Supp. d 260, 267 (D. Del. 2010) ( [T]he dual jurisdiction concept arises from at

least partial satisfaction of subsections (1) and (4) of the Delaware long-arm statute Dual

jurisdiction

may

be established when ·a manufacturer has sufficient general contacts with

Delaware and the plaintiffs' claims arise out of those contacts. ). Blackbird also asserts that

Leonisa in particular satisfies section 3104(c)(3)

of

the long-arm statute. Del. Code

Ann.

tit. 10,

§

3104(c)(3) (West). Moreover, Blackbird argues that the exercise

of

specific jurisdiction over

the defendants would comport with due process.

Critical to both the statutory and due process inquiries is the question of whether the

defendants have demonstrated an intent to serve the Delaware market, Graphics Props.


3/5

Holdings, Inc. v. SUS Computer Int' ,

No. 13-864-LPS, 2014 W 4949589, at *5 (D. Del. Sept.

29, 2014), or have purposefully directed [their] activities at residents of the forum.

See Burger

King Corp. v. Rudzewicz,

471

U.S. 462, 472 (1985). · Previously, Delaware courts indicated that

[a] non-resident firm's intent to serve the United States market is sufficient to establish an intent

to

serve the Delaware market, unless there is evidence that the firm intended to exclude from its

marketing and distribution efforts some portion of the country that includes Delaware.

Graphics Props. Holdings, Inc. v. SUS Computer Int' ,

No. 13-864-LPS, 2014 W 4949589, at

*3 D. Del. Sept. 29, 2014) (quoting

Power Integrations, Inc. v. BCD Semiconductor Corp.,

547

F.

Supp. 2d 365, 373 (D. Del. 2008)). The court is not convinced this statement remains

good law in the due process context.

See J Mcintyre Mach., Ltd. v. Nicastro,

131 S. Ct. 2780(2011); see also Polar Electro Oy

v.

Suunto Oy, No. 11-1100-GMS, 2015 W

2248439, at

*5

n.6 (D. Del.

May

12, 2015) ( Both the plurality and concurring opinions in

Mcintyre

show that sales in a forum made through a national distributor do not evince purposeful

availment of. that forum's laws. );

Oticon, Inc. v. Sebotek Hearing Sys., LLC,

865 F. Supp. 2·d 501, 513 (D.N.J. 2011) ( Read as a whole, [Mcintyre] does not clearly or

. conclusively define the breadth and scope

of

the stream

of

commerce

theory However, there is no doubt that [Mcintyre] stands for the proposition that

targeting the national market is

not

enough to impute jurisdiction to all the forum States. In that

regard,

[Mcintyre]

overruled the line of cases exemplified

by Power Integrations,

which held

to the contrary. ). And because the Delaware long-arm statute has been construed to confer

jurisdiction to the maximum extent possible under the Due Process Clause, the dual jurisdiction

doctrine is to be similarly limited.

179

F.

Supp. 2d 368, 372 (D. Del. 2002).

See Merck Co. Inc.

v.

Barr Labs., Inc.,

2


4/5

While the Supreme Court in

Mcintyre

did not announce a binding rule going forward,

Justice Breyer's concurrence illustrates the narrowest holding.

See Marks v. United States 430

U.S. 188, 193 (1977) ( When a fragmented Court decides a case and no single rationale

explaining the result enjoys the assent of five Justices, the holding of the Court may be viewed as

that position taken y those Members who concurred in the judgments on the narrowest

grounds. (internal quotation marks omitted)).

[T]he Court, in separate opinions, has strongly suggested that a

single sale of a product in a State does not constitute an adequate

basis for asserting jurisdiction over an out-of-state defendant, even

if that defendant places his goods in the stream

of

commerce, fully

aware (and hoping) that such a sale will take place.

Mcintyre Mach. Ltd.

v.

Nicastro 131 S

Ct. 2780, 2792 (2011) (Breyer, J., concurring).

Rather, the plaintiff must prove purposeful availment y pointing to a regular flow or regular

course of sales in the forum state, or 'something more,' such as special state-related design,

advertising, advice, marketing, or anything else. Id. (internal quotation marks and alterations

omitted).

Based on the limited information currently available, the court cannot say that Blackbird

has proven the defendants' intent to serve the Delaware market or a purposeful availment

of

Delaware's laws. Blackbird, however, requests an opportunity to conduct jurisdictional

discovery.

1

Although the plaintiff bears the burden of demonstrating facts that support personal

jurisdiction, courts are to assist the plaintiff y allowing jurisdictional discovery unless the

plaintiffs claim is clearly frivolous.

Toys

R

Us

Inc.

v.

Step

Two

S.A.

318 F.3d 446, 356 (3d

Cir. 2003) (internal citation and quotation marks omitted). The court is satisfied that Blackbird's

request is not clearly frivolous. The defendants have already each acknowledged that their

1

Third Circuit law governs the court 's decision to permit jurisdictional discovery. See Autogenomics Inc.

v. Oxford Gene Tech. Ltd. 566 F.3d 1012, 1021 (Fed. Cir. 2009).

3


5/5

accused products have been shipped to Delaware customers. Blackbird is entitled to inquire as to

the full extent

o

the defendants dealings with the State o Delaware, not necessarily limited to

sales o the accused products.

WHEREAS, the court having considered the parties written submissions as well as the

applicable law;

IT IS HEREBY ORDERED THAT:

- 1 The above-captioned defendants Motions to Dismiss for Lack

o

Personal Jurisdiction

(C.A. 14-1256-GMS, D.I. 12; C.A. 14-1258-GMS, D.I. 11; C.A. 14-1262-GMS, D.I. 7)

are held in ABEYANCE, awaiting jurisdictional discovery.

2 Blackbird s requests for limited jurisdictional discovery in the above-captioned cases

(C.A. 14-1256-GMS, D.I. 22 at 10; C.A. 14-1258-GMS, D.I. 17 at 11; C.A. 14-1262-

GMS, D.I. 12 at 11) are GRANTED.

3 Blackbird and the respective defendants shall meet and confer to discuss the scope and

timing o jurisdictional discovery. The parties are direded to follow the court s

discovery dispute procedures should they require further guidance.

4 At the close o discovery, defendants seeking to maintain their objection shall submit

updated briefing, renewing their motion to dismiss. The parties need not readdress their

arguments concerning transfer o venue.

Dated: July

~

2015

4

blackbird tech llc v. sakka’s stores, inc., et al., c.a. no. 14-1256-gms (d. del. july 21, 2015)

Documents