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Sunrise Technologies, Inc. v. Ireland

United States District Court, D. Massachusetts

June 14, 2016

SELC IRELAND, LTD., Defendant.

          SUNRISE TECHNOLOGIES, INC., Plaintiff, represented by Michael A. Albert, Wolf, Greenfield & Sacks, PC & Marie A. McKiernan, Wolf, Greenfield & Sacks, PC.

          SELC IRELAND LTD., Defendant, represented by William J. Egan, Robinson & Cole & Kendra L. Berardi, Robinson & Cole.


          NATHANIEL M. GORTON, District Judge.


         This is 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.

         The 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.

         As 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.


         Standard of Review of Record

         "On 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).[1] 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.[2]

         The Parties

         The plaintiff, Sunrise, is a Massachusetts corporation having a principal place of business in Raynham, Massachusetts. (Compl. ¶ 2). Sunrise markets outdoor lighting control products under a variety of brand names, as well as a range of wireless products. (Id. ¶ 3). In addition, Sunrise owns all of the rights, title and interest in the '793 Patent. (Id. ¶ 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. ¶ 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.).

         Defendant SELC is an Irish corporation that has its principal place of business in Mayo, Ireland. (Carey Aff. ¶ 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. ¶¶ 5-6). At issue is whether SELC's activities in this country subject it to personal jurisdiction in Massachusetts or in North Carolina.

         SELC's Lack of Contacts with Massachusetts

         Sunrise 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. ¶ 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. ¶¶ 10-11). Nor has anyone from SELC has ever entered Massachusetts in order to perform business-related activities on behalf of the company. (Id. ¶ 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. ¶¶ 12-14, 18; Dixon Aff. ¶¶ 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. ¶ 15).

         Sunrise alleges that SELC's infringing conduct includes the marketing and sale of its "Wireless Central Monitoring Systems." (Compl. ¶ 11). SELC understands that those products include its Central Monitoring System product and its Plug & Play Wireless Lighting Controller product. (Carey Aff. ¶ 16). The record establishes that SELC has never sold either of those products to a customer in Massachusetts. (Id. ¶ 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. ¶¶ 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. ¶ 20).

         SELC's Activities in North Carolina

         While 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.

         The 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. ¶¶ 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. ¶ 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. ¶ 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. ¶¶ 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. ¶¶ 5-6; Pl. Exs. C-D, K-M).

         Although 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. ¶¶ 2, 5; Carey Aff. ¶ 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. ¶¶ 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. ¶ 5).

         Procedural History

         On 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 manner.

         Although 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 Procedure.

         Additional factual details relevant to this court's analysis are provided below where appropriate.

         III. ANALYSIS

         A. Personal ...

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