United States District Court, D. Massachusetts
SUNRISE TECHNOLOGIES, INC. Plaintiff,
SELC IRELAND, LTD., Defendant.
SUNRISE TECHNOLOGIES, INC., Plaintiff, represented by Michael
A. Albert, Wolf, Greenfield & Sacks, PC & Marie A. McKiernan,
Wolf, Greenfield & Sacks, PC.
IRELAND LTD., Defendant, represented by William J. Egan,
Robinson & Cole & Kendra L. Berardi, Robinson & Cole.
REPORT AND RECOMMENDATION ON DEFENDANT'S MOTION
NATHANIEL M. GORTON, District Judge.
a patent infringement action in which the plaintiff, Sunrise
Technologies, Inc. ("Sunrise"), claims that the
defendant, SELC Ireland Ltd. ("SELC"), is willfully
and deliberately infringing, contributing to the
infringement, and/or inducing the infringement of U.S. Patent
No. 7, 825, 793 entitled "Remote Monitoring and Control
System" (the "'793 Patent"). SELC is an
Irish corporation with a principal place of business in Mayo,
Ireland, and a competitor of Sunrise in the market for
outdoor lighting control products. Since 2012, SELC has
relied on the services of Amanda Dixon, who is listed on
SELC's promotional materials as the company's
Business and Development Manager, to carry out its sales and
marketing efforts throughout North America, including the
United States. Ms. Dixon, who is apparently an independent
contractor, performs these activities from her home in North
Carolina. However, she has never sold or promoted any of
SELC's products to customers or potential customers who
are located in Massachusetts. After consideration of
defendants' objection thereto (Docket No. 37 Report amd
Recommendation accepted and adopted.
matter is presently before the court on the
"Defendant's Motion to Dismiss Pursuant to
Fed.R.Civ.P. 12(b)(2) and (5)" (Docket No. 15), by which
SELC is seeking the dismissal of this action for lack of
personal jurisdiction and insufficient service of process. In
support of its motion, SELC argues that it lacks sufficient
contacts with Massachusetts to subject it to personal
jurisdiction in this court under Fed.R.Civ.P. 4(k)(1)(A). It
also contends that this court may not exercise personal
jurisdiction over it under the federal long-arm statute found
in Fed.R.Civ.P. 4(k)(2) because that Rule applies only where
a foreign defendant is not subject to personal jurisdiction
in the courts of any state, and SELC maintains that it is
subject to personal jurisdiction in the courts of North
Carolina as a result of Ms. Dixon's activities there.
Finally, SELC argues that Sunrise's effort to effectuate
service of process upon it by delivering a copy of the
Summons and Complaint to Ms. Dixon's home in North
Carolina was inadequate because Ms. Dixon is not an officer,
managing agent or general agent of the company, and is not
authorized to accept service of process on its behalf.
Therefore, it contends that this matter must be dismissed on
the grounds of insufficient service of process as well.
described below, this court finds that SELC is subject to
personal jurisdiction in this court under the federal
long-arm statute established by Rule 4(k)(2). This court also
finds that Sunrise's efforts at service upon SELC should
be deemed effective because Ms. Dixon has acted as a managing
or general agent of SELC for purposes of accepting service of
process, and because Sunrise has completed a second service
upon SELC in Ireland pursuant to the Hague Convention.
Accordingly, and for all the reasons detailed herein, this
court recommends to the District Judge to whom this case is
assigned that SELC's motion to dismiss be DENIED.
STATEMENT OF FACTS
of Review of Record
a motion to dismiss for want of personal jurisdiction, the
plaintiff ultimately bears the burden of persuading the court
that jurisdiction exists." Astro-Med, Inc. v. Nihon
Kohden Am., Inc., 591 F.3d 1, 8 (1st Cir. 2009), and
cases cited. Where, as here, "the district court's
disposition as to the personal jurisdiction question is based
on affidavits and other written materials in the absence of
an evidentiary hearing, a plaintiff need only to make a
prima facie showing that [the defendant is] subject
to personal jurisdiction." Elecs. for Imaging, Inc.
v. Coyle, 340 F.3d 1344, 1349 (Fed. Cir.
2003). In evaluating whether the plaintiff
has met this burden, the court "must accept the
uncontroverted allegations in the plaintiff's complaint
as true and resolve any factual conflicts in the affidavits
in the plaintiff's favor." Id . However,
the plaintiff is only entitled to "those inferences that
are reasonable" from the allegations. Autogenomics,
Inc. v. Oxford Gene Tech. Ltd., 566 F.3d 1012, 1018
(Fed. Cir. 2009). Applying this standard to the instant case,
the relevant facts are as follows.
plaintiff, Sunrise, is a Massachusetts corporation having a
principal place of business in Raynham, Massachusetts.
(Compl. Â¶ 2). Sunrise markets outdoor lighting control
products under a variety of brand names, as well as a range
of wireless products. (Id. Â¶ 3). In addition, Sunrise owns
all of the rights, title and interest in the '793 Patent.
(Id. Â¶ 8). The '793 Patent was issued on November 2, 2010
and is entitled "Remote Monitoring and Control
System." (Id.). It is generally directed to "[a]
communication system that provides communication of
information between an end user device and a remote end
user[, ]" and involves the formation of a mesh network
of wirelessly linked communication nodes mounted on top of
utility poles such as street lights. (See Pl. Ex. A at
Abstract). In this action, Sunrise claims that "SELC has
infringed and continues to infringe, literally or under the
doctrine of equivalents, the '793 patent by making,
using, importing, offering to sell, and/or selling products
or processes that practice one or more inventions claimed in
the 793 patent[.]" (Compl. Â¶ 11). It further claims that
SELC has induced others, including but not limited to its
customers, to infringe upon Sunrise's rights in the
'793 Patent. (Id.).
SELC is an Irish corporation that has its principal place of
business in Mayo, Ireland. (Carey Aff. Â¶ 3). According to its
marketing materials, SELC designs, manufactures and markets
street lighting control devices for use in the global market,
and its stated mission is "[t]o make the street light
the most important piece of urban infrastructure everywhere,
bar none, by providing world-class intelligent street
lighting control and urban monitoring solutions that our
customers will say are the best available,
globally.'" (Pl. Ex. B at 2). There is no dispute
that SELC markets and sells its street lighting control
products, including products which are the subject of
Sunrise's infringement claim against SELC, to customers
and potential customers located in the United States. (Id. at
8; Dixon Aff. Â¶Â¶ 5-6). At issue is whether SELC's
activities in this country subject it to personal
jurisdiction in Massachusetts or in North Carolina.
Lack of Contacts with Massachusetts
alleges in its Complaint, "[o]n information and belief,
" that SELC has sufficient contacts with Massachusetts
to subject it to personal jurisdiction in this forum. (Compl.
Â¶ 7). However, the evidentiary record fails to support this
allegation. The record provides uncontro-verted evidence that
SELC is not registered to do business in Massachusetts and
conducts no business activities here. (Carey Aff. Â¶Â¶ 10-11).
Nor has anyone from SELC has ever entered Massachusetts in
order to perform business-related activities on behalf of the
company. (Id. Â¶ 12). The record further shows that SELC has
no employees, maintains no bank accounts and owns no property
in the Commonwealth, has never directed any of its
advertising toward Massachusetts, and is not involved in any
marketing or sales efforts here. (Id. Â¶Â¶ 12-14, 18; Dixon
Aff. Â¶Â¶ 5-8). Moreover, according to SELC's Executive
Director, SELC has never entered into any contractual
agreements with Sunrise, much less contracted with Sunrise in
order to provide goods or services to any customers or other
individuals located in Massachusetts. (Carey Aff. Â¶ 15).
alleges that SELC's infringing conduct includes the
marketing and sale of its "Wireless Central Monitoring
Systems." (Compl. Â¶ 11). SELC understands that those
products include its Central Monitoring System product and
its Plug & Play Wireless Lighting Controller product. (Carey
Aff. Â¶ 16). The record establishes that SELC has never sold
either of those products to a customer in Massachusetts. (Id.
Â¶ 17). Furthermore, while SELC maintains a rwebsite that
provides information about the company and is accessible to
viewers in Massachusetts, the website contains no references
to Massachusetts, does not enable users to order products
over the internet, and contains no interactive features
beyond a search field and a "Contact Us" option
that allows users to request information or share their views
with the company. (Id. Â¶Â¶ 18-21). Any requests or comments
that are received through the "Contact Us" feature
are handled by SELC employees who are located in Ireland.
(Id. Â¶ 20).
Activities in North Carolina
SELC denies that it is subject to personal jurisdiction in
Massachusetts, and denies that it has a registered agent in
North Carolina authorized to accept service there, it
nevertheless contends that North Carolina would be an
appropriate forum in which to litigate Sunrise's claim
for patent infringement. (Def. Supp. (Docket No. 32) at 1).
In connection with this argument SELC has represented that it
would not challenge the jurisdiction of the North Carolina
court if suit proceeded there. As detailed below, however,
this court concludes that there is no personal jurisdiction
over SELC in North Carolina.
record establishes that SELC relies primarily upon Amanda
Dixon, a resident of North Carolina, to carry out its sales
and marketing operations throughout North America, including
the United States, and that Ms. Dixon performs most of those
activities from her home in Apex, North Carolina. (Dixon Aff.
Â¶Â¶ 3-5). For example but without limitation, Ms. Dixon
coordinates and implements all of SELC's U.S. sales
activities, prepares sales and marketing materials, provides
and coordinates customer service assistance, and makes
arrangements for SELC to participate in trade shows and other
marketing events, from her home in North Carolina. (Id. Â¶ 5).
In addition, Ms. Dixon communicates with other SELC
personnel, as well as with the company's customers,
potential customers and marketing contacts, from her North
Carolina residence. (Id.). According to Ms. Dixon, SELC has
been able to achieve significant sales of its products in
Florida, worth millions of dollars, due to the efforts she
has made and the work she has performed in North Carolina.
(Id. Â¶ 6). However, she has not been involved in any
marketing or sales efforts in Massachusetts, and is unaware
of any such activity by SELC that has occurred in
Massachusetts. (See id. Â¶Â¶ 5-7). Similarly, there is no
evidence that she has directed any sales or marketing efforts
at residents of North Carolina or made any sales for SELC to
any North Carolina-based customers. (See id. Â¶Â¶ 5-6; Pl. Exs.
Ms. Dixon is allegedly an independent contractor rather than
an employee of the defendant, both SELC and Ms. Dixon hold
her out to the public as SELC's Business Development
Manager. (See id. Â¶Â¶ 2, 5; Carey Aff. Â¶ 6). SELC also lists
Ms. Dixon on its website as a member of its four-person
management team. (Pl. Exs. E & F). It is undisputed that Ms.
Dixon has represented SELC, in her role as the company's
Business Development Manager, since August 2012, and that she
typically spends at least 40 hours per week carrying out
sales, marketing and other business activities on behalf of
the defendant. (Dixon Aff. Â¶Â¶ 3, 5). Although SELC asserts
that Ms. Dixon performs work for unrelated companies as well,
it has not identified any other companies or described how
many hours Ms. Dixon spends working for such entities. (See
Carey Aff. Â¶ 5).
April 8, 2015, Sunrise initiated this action by filing a
Complaint for Patent Infringement against SELC. (Docket No.
1). On August 6, 2015, Sunrise filed a Proof of Service
indicating that service of process had been made upon the
defendant by delivering a copy of the Summons and Complaint,
addressed to "SELC Ireland Ltd. c/o Amanda Dixon, "
at Ms. Dixon's "residence or usual place of
abode" in Apex, North Carolina. (Docket No. 7). SELC
challenges the adequacy of Sunrise's service in this
Sunrise maintains that its service upon Ms. Dixon was
effective, it attempted to serve SELC a second time pursuant
to Article 10(a) of the Hague Convention. (See Pl. Ex. G; Pl.
Opp. Mem. (Docket No. 17) at 3). Thus, on or about September
11, 2015, Sunrise sent copies of the Summons and Complaint,
via Federal Express, directly to the defendant at its
principal place of business address in Mayo, Ireland. (See
Pl. Ex. G). The parties dispute whether the plaintiff's
failure to file a second Proof of Service following its
service under the Hague Convention renders its second attempt
at service insufficient under the Federal Rules of Civil
factual details relevant to this court's analysis are
provided below where appropriate.