United States District Court, D. Delaware
BOSTON SCIENTIFIC CORPORATION and BOSTON SCIENTIFIC SCIMED, INC., Plaintiffs,
MICRO-TECH ENDOSCOPY USA INC., MICRO-TECH NANJING CO., LTD. and HENRY SCHEIN INC., Defendants.
REPORT AND RECOMMENDATION
CHRISTOPHER J. BURKE UNITED STATES MAGISTRATE JUDGE.
patent infringement action filed by Plaintiffs Boston
Scientific Corp. and Boston Scientific Scimed, Inc.
("Plaintiffs") against Defendants Micro-Tech
(Nanjing) Co., Ltd. ("Micro-Tech Nanjing")
Micro-Tech Endoscopy USA Inc. ("Micro-Tech USA"),
and Henry Schein Inc. ("Henry Schein")
(collectively, "Defendants"), pending is a motion
in which: (1) Micro-Tech Nanjing moves for dismissal due to
lack of personal jurisdiction, pursuant to Federal Rule of
Civil Procedure 12(b)(2); and (2) Defendants each move for
dismissal of the operative complaint due to failure to state
a claim, pursuant to Federal Rule of Civil Procedure 12(b)(6)
(the "Motion"). (D.I. 9) For the reasons set forth
below, the Court recommends that the Motion be DENIED.
develop and manufacture medical devices, including endoscopic
products for the treatment of diseases of the digestive
system. (D.I. 1 at ¶¶ 2-3) Among the medical
devices that Plaintiffs have developed and sold are the
Resolution™ and Resolution 360™ hemostatic clips,
which are used to stop bleeding in the gastrointestinal
tract. (Id. at ¶ 13)
are also in the business of producing and selling hemostatic
clips, and compete with Plaintiffs by selling the allegedly
infringing SureClip™, Sure Clip™ MINI and
SureClip™ PLUS Hemostasis Clips (the "SureClip
Hemostasis Clip products" or the "accused
products"). (Id. at ¶ 17) The three
Defendants include one foreign and two domestic companies.
foreign company Defendant-Micro-Tech Nanjing-is a corporation
organized under the laws of Jiangsu Province, China; it also
has its principal place of business located there.
(Id. at ¶ 5) Micro-Tech Nanjing allegedly
manufactures, imports and distributes medical devices,
including endoscopic instruments. (Id. at
¶¶ 5, 11, 17) Plaintiffs' Complaint asserts
that Micro-Tech Nanjing manufactures the accused products so
that they may later be sold in the United States. (Mat
regard to Micro-Tech Nanjing's business, Defendants put
forward the sworn declaration of Jie Yin (the "Yin
Declaration"), who is described as a "General
Manager Assistant" of that company. (D.I. 11 at ¶
1) The Yin Declaration does not rebut the Complaint's
allegation that Micro-Tech Nanjing manufactures the accused
products. And it confirms that Micro-Tech Nanjing
"sell[s] certain of these products to Micro-Tech
USA," though it explains that Micro-Tech Nanjing does so
"in the country of manufacture or in international
waters, not in the United States [such that] Micro-Tech USA
takes title to the products outside the United States."
(Id. at ¶ 11) The Yin Declaration thus asserts
that Micro-Tech Nanjing "does not import those products
into the United States, either now or in the past."
(Id.) The Yin Declaration also states that
Micro-Tech Nanjing has no direct connection to Delaware. That
is, the Yin Declaration explains that Micro-Tech Nanjing has
no real or personal property in Delaware, no officers or
employees in Delaware, does not regularly solicit business in
or derive revenue from activities in Delaware, and does not
sell any of its products in Delaware. (Id. at
¶¶ 3-4, 6-7) Further, according to the Yin
Declaration, it is not possible for Delaware residents to
place orders for the accused products through Micro-Tech
Nanjing's website. (Id. at ¶ 9).
domestic Defendants-Micro-Tech USA and Henry Schein-are
Delaware corporations with principal places of business
respectively located in Ann Arbor, Michigan and Melville, New
York. (D.I. 1 at ¶¶ 4, 6) Micro-Tech USA and Henry
Schein distribute Micro-Tech Nanjing's devices in the
United States. (Id. at ¶¶ 4, 6, 17, exs.
information regarding Micro-Tech Nanjing, its relationship
with the other two Defendants and the personal jurisdiction
issues discussed herein will be set out in Section III. A.
filed their Complaint on November 26, 2018. (D.I. 1) While
Micro-Tech USA and Henry Schein accepted service of process,
(D.I. 5; D.I. 6), Micro-Tech Nanjing filed a waiver of
service on December 14, 2018. (D.I. 7)
their Complaint, Plaintiffs assert that Defendants infringe
three patents: United States Patent Nos. 9, 980, 725
("the 725 patent"), 7, 094, 245 ("the '245
patent") and 8, 974, 371 ("the '371
patent") (collectively, "the
patents-in-suit"). (D.I. 1 at ¶ 1) The 725 and
'371 patents cover an apparatus for applying hemostatic
clips to tissue. (Id. at ¶¶ 23-29, 52-58)
The '245 patent covers an apparatus for causing the
hemostasis of a blood vessel for use through an endoscope,
(id. at ¶¶ 37-44), as well as a method for
using such an apparatus, ('245 patent, cols,
allege that Defendants infringe all three patents by making,
using, selling, offering to sell and/or importing into the
United States for sale the accused products. (D.I. 1 at
¶¶ 17, 22, 35, 51) Additionally, Plaintiffs allege
that Defendants induce customers and end-users of the accused
products to infringe the method of the '245 patent.
(Id. at ¶ 36)
filed the instant Motion on March 13, 2019. (D.I. 9) The
Motion was fully briefed by April 3, 2019. (D.I. 20)
30, 2019, this case was referred to the Court to hear and
resolve all pretrial matters up to and including expert
discovery matters. (D.I. 22) Thereafter, the Court held a
Case Management Conference and issued a Scheduling Order.
(Docket Entry, Sept. 9, 2019; D.I. 29; D.I. 30 (hereinafter
the Court could issue a decision on the instant Motion,
however, on September 23, 2019, Plaintiffs filed a motion
seeking leave to file a supplemental brief relating to the
Motion (the "motion for leave"). With the motion
for leave, Plaintiffs sought leave to address their view as
to how Federal Rule of Civil Procedure 4(k)(2) applies to the
Motion, based in significant part on assertions made by
Defendants' counsel during the Case Management
Conference. (D.I. 32) After considering Defendants'
opposition to the motion for leave, (D.I. 33; D.I. 34), the
Court granted the motion, accepted Plaintiffs' opening
supplemental brief, and set a schedule for the parties to
file supplemental answering and reply briefs, (D.I.
This supplemental briefing was completed on October 18, 2019.
STANDARD OF REVIEW
Personal Jurisdiction, Rule 12(b)(2) and Rule
12(b)(2) requires the Court to dismiss any case in which it
lacks personal jurisdiction. Fed.R.Civ.P. 12(b)(2);
Nespresso USA, Inc. v. Ethical Coffee Co. SA, 263
F.Supp.3d 498, 502 (D. Del. 2017). When a defendant moves to
dismiss a lawsuit for lack of personal jurisdiction, the
plaintiff bears the burden of showing the basis for
jurisdiction; in a situation like this, where no evidentiary
hearing has been held, the plaintiff must only make a
prima facie showing that personal jurisdiction
exists. See Nespresso, 263 F.Supp.3d at 502;
Hardwire, LLC v. Zero Int'l, Inc., Civil Action
No. 14-54-LPS-CJB, 2014 WL 5144610, at *5 (D. Del. Oct. 14,
2014) (citing cases); Power Integrations, Inc. v. BCD
Semiconductor Corp., 547 F.Supp.2d 365, 369 (D. Del.
2008). To make out this prima facie showing, the
plaintiff must '"establish with reasonable
particularity sufficient contacts between the defendant and
the forum state.'" Mellon Bank (E.) PSFS,
Nat'l Ass'n v. Farino, 960 F.2d 1217, 1223 (3d
Cir. 1992) (citations omitted); see also
bioMérieux, S.A. v. Hologic, Inc., Civil Action
No. 18-21-LPS, 2018 WL 4647483, at *2 (D. Del. Sept. 26,
2018). In reviewing a motion to dismiss for lack of personal
jurisdiction, the Court may consider the pleadings,
affidavits, declarations and exhibits, and must construe all
disputed facts in the plaintiffs favor. Round Rock
Research LLC v. ASUSTeK Comput. Inc., 967 F.Supp.2d 969,
972 (D. Del. 2013); Power Integrations, 547
F.Supp.2d at 369; see also Hardwire, 2014 WL
5144610, at *5.
Supreme Court of the United States has recognized two
classifications of personal jurisdiction: "general
jurisdiction" and "specific jurisdiction."
Goodyear Dunlop Tires Operations, S.A. v. Brown, 564
U.S. 915, 919 (2011) (internal quotation marks and citations
omitted). The Supreme Court distinguished between these
concepts in International Shoe Co. v. Washington,
326 U.S. 310 (1945), which remains the "'canonical
opinion'" in the area of personal jurisdiction.
Daimler AG v. Bauman, 571 U.S. 117, 126 (2014)
(citation omitted). "Specific jurisdiction"
encompasses causes of action that '"aris[e] out of
or relate to the defendant's contacts with the
forum.'" Goodyear, 564 U.S. at 923-24
(quoting Helicopteros Nacionales de Colombia, S.A. v.
Hall, 466 U.S. 408, 414 n.8 (1984)). "General
jurisdiction" encompasses complaints arising from
dealings that are distinct from the defendant's
activities in the state. Id. at 924 (citing
Int'l Shoe, 326 U.S. at 318); see also
Daimler, 571 U.S. at 127. A court may exercise
"general jurisdiction over foreign (sister-state or
foreign-country) corporations" only when the
corporation's "affiliations with the State [in which
suit is brought] are so 'continuous and systematic'
as to render [it] essentially at home in the forum
State." Daimler, 571 U.S. at 127 (quoting
Goodyear, 564 U.S. at 919).
order to establish personal jurisdiction, a plaintiff must
adduce facts sufficient to satisfy two requirements-one
statutory and one constitutional. Hardwire, 2014 WL
5144610, at *6. In the typical analysis of the statutory
prong, courts consider whether the defendant's actions
fall within the scope of a state's long-arm statute.
Id. at *6; Power Integrations, 547
F.Supp.2d at 369. In analyzing the constitutional prong,
courts determine whether the exercise of jurisdiction
comports with the defendant's right to due process.
Hardwire, 2014 WL 5144610, at *6; Power
Integrations, 547 F.Supp.2d at 369 (citing Int'l
Shoe, 326 U.S. at 316). Due process is satisfied if the
Court finds the existence of'"minimum contacts'
between the non-resident defendant and the forum state,
'such that the maintenance of the suit does not offend
traditional notions of fair play and substantial
justice.'" Power Integrations, 547
F.Supp.2d at 369 (quoting Int'l Shoe., 326 U.S.
certain disputes over personal jurisdiction implicate Rule
4(k)(2), which "serves as a federal long-arm
statute[.]" M-I Drilling Fluids UK Ltd. v. Dynamic
Air Ltda., 890 F.3d 995, 999 (Fed. Cir. 2018). Rule
4(k)(2) allows '"a court to exercise personal
jurisdiction over a defendant if (1) the plaintiffs claim
arises under federal law, (2) the defendant is not subject to
jurisdiction in any state's courts of general
jurisdiction, and (3) the exercise of jurisdiction comports
with due process.'" Id. (quoting
Synthes (U.S.A.) v. G.M. Dos Reis Jr. Ind. Com de Equip.
Medico, 563 F.3d 1285, 1300 (Fed. Cir. 2009)).
'"The third requirement under Rule 4(k)(2)-the due
process analysis-contemplates a defendant's contacts with
the entire United States, as opposed to the state in which
the district court sits.'" Id. (quoting
Synthes, 563 F.3d at 1295). Rule 4(k)(2) was enacted
by the 1993 amendments to the Federal Rules in order to
"close a loophole" that existed when a foreign
defendant had sufficient contacts with the United States to
justify the exercise of jurisdiction, but lacked sufficient
contacts with any single state to satisfy a state long-arm
statute or the due process constraints of the Fourteenth
Amendment. Synthes, 563 F.3d at 1296 (citing the
1993 advisory committee notes to Rule 4(k)(2)). The Rule is
thus meant to allow a district court to exercise personal
jurisdiction over a foreign defendant whose contacts with the
United States, but not with the forum state, satisfy due
process. M-I Drilling, 890 F.3d at 999.
assessing a personal jurisdiction question in a patent case,
authority from the United States Court of Appeals for the
Federal Circuit is controlling. See Avocent Himtsville
Corp. v. Aten Int'l Co.,552 F.3d 1324, 1328 (Fed.
Cir. 2008); Boston Set Corp. v. Wall Cardiovascular
Techs., LLC,647 F.Supp.2d 358, 364 (D. Del. 2009). With
regard to the typical way in which the statutory prong is
analyzed (i.e., by looking to a state's long-arm
statute), the Federal Circuit defers to the law of the
relevant state courts and federal courts; thereafter, in
assessing the constitutional prong, the Federal Circuit
follows its own law. Round Rock Research, 967
F.Supp.2d at 973; Graphics Props. Holdings Inc. v. Asus