United States District Court, D. Maryland
THEODORE D. CHUANG, District Judge.
Before the Court are Defendant Martin Door Manufacturing, Inc.'s Motion to Dismiss for Lack of Personal Jurisdiction and Improper Venue, or, in the Alternative for Transfer to the District of Utah, ECF No. 7; Defendant DirectBuy, Inc.'s Motion to Dismiss for Lack of Personal Jurisdiction, ECF No. 12; and Plaintiffs FrenchPorte IP, LLC and FrenchPorte, LLC's Motion for Jurisdictional Discovery, ECF No. 26. For the reasons set forth below, the Court DENIES Martin Door's motion, DEFERS DirectBuy's motion pending jurisdictional discovery, and DISMISSES AS MOOT FrenchPorte's motion.
BACKGROUND AND PROCEDURAL HISTORY
This is a patent infringement action filed by FrenchPorte IP, LLC and FrenchPorte, LLC against Martin Door Manufacturing, Inc. ("Martin Door"), DirectBuy, Inc. ("DirectBuy"), and Awning Concepts Unlimited, LLC ("Awning Concepts"). FrenchPorte IP, LLC and FrenchPorte, LLC (collectively, "FrenchPorte") are Maryland limited liability companies with their principal places of business in Chevy Chase, Maryland. FrenchPorte is the assignee of nine U.S. patents. Eight of those patents-one utility and seven design patents-are for "overhead garage doors that look just like French doors." Compl. ¶ 10. ECF No. 1. The remaining patent is for a "pinch resistant apparatus" that prevents a person's fingers from being pinched between the joints of the garage door. Compl. Ex. N at col. 1, line 52. Martin Door is a California corporation with its principal place of business in Salt Lake City, Utah. DirectBuy is an Indiana corporation with its principal place of business in Merrilville, Indiana. Awning Concepts is a Maryland limited liability company with its principal place of business in Stevensville, Maryland; it is the registered owner of the trade name "Shore Doors & Awnings." Awning Concepts has thus far made no appearance in the case.
In 2003, FrenchPorte began to manufacture and sell its patented garage doors. In 2006, it developed and began to include on its doors the patented pinch-resistant apparatus. By 2006, FrenchPorte had achieved a fair amount of success on the East Coast and was looking to expand its presence in the Midwest and Western markets. With that aim, in May 2006, representatives from FrenchPorte met with representatives from Martin Door-a "well-established garage door manufacturer and distributor with deep roots in the Midwest and West"-to discuss a partnership. Compl. ¶ 24. As part of those discussions, FrcnchPorte "displayed [its] pinch resistance extrusion design and [a] door sample" to executives from Martin Door. Id. ¶ 26. Although initially promising, the discussions ultimately went nowhere, and by 2007, "Martin [Door] was no longer even returning phone calls from FrenchPorte's CEO." Id. ¶ 33.
In FrenchPorte's estimation, the cause of this communication breakdown was clear. In 2007, Martin Door began to include "FingerShield" joints on all of its residential aluminum garage doors. FrenchPorte alleges that Martin Door's FingerShield joint is essentially the same as FrenchPorte's patented "pinch resistance extrusion design, " which FrenchPorte showed to Martin Door in 2006. And in 2009, Martin Door began to manufacture and sell the "Avignon" garage door (later rebranded the "Athena" garage door), a door that FrenchPorte alleges is essentially identical to its patented garage door, which was displayed to Martin Door in 2006. See Compl. Exs. O and R. Martin Door continues to include the FingerShield joint on its residential aluminum garage doors; it sold the Avignon/Athena garage door until at least October 16, 2013. FrenchPorte alleges that Martin Door sold the Avignon/Athena doors and sold and continues to sell doors with the FingerShield joint specifically in Maryland through a distribution channel consisting of its authorized dealer, Awning Concepts, and a retailer, DirectBuy.
On January 30, 2014, FrenchPorte filed a patent infringement suit in this Court against Martin Door, DirectBuy, and Awning Concepts. ECF No. 1. In the Complaint, FrenchPorte argues that this Court has personal jurisdiction over Martin Door and DirectBuy because both have "sold and, unless restrained by this Court, will continue to sell" to Maryland residents garage doors that infringe FrenchPorte's patents. Compl. ¶¶ 6(d) and 7(d). FrenchPorte explains that it does not know the exact volume of these sales, but that "[a]t a bare minimum, " Defendants have "collectively sold between 10 and 20 infringing Martin garage doors" to Maryland residents. Id. ¶¶ 6(e) and 7(e).
More specifically, FrenchPorte asserts that Martin Door is subject to personal jurisdiction in Maryland because it "creat[ed] and maintain[s] a distribution channel in this State" for its allegedly infringing doors, "consisting of its authorized dealer, Awning Concepts using the trade name Shore Doors, and a retailer, DirectBuy, " Compl. ¶ 6(b). As evidence of this distribution channel, FrenchPorte has appended to its complaint a screenshot of Martin Door's website listing Shore Doors in Stevensville, Maryland, as a Martin Door "Authorized Dealer." Compl. Ex. A. FrenchPorte additionally asserts that Martin Door's website-through which it is, in FrenchPorte's estimation, "doing and soliciting business" in Maryland-is another basis for personal jurisdiction. Compl. ¶ 6(c).
FrenchPorte alleges that DirectBuy is subject to personal jurisdiction in Maryland because it "creat[ed] and maintain[s] three showrooms" in Maryland-DirectBuy of Columbia, DirectBuy of Washington North, and DirectBuy of Southern Maryland-"at least in part with the intent and for the purpose" of selling Martin Door's allegedly infringing garage doors to Maryland residents. Compl. ¶ 7(b). FrenchPorte notes, however, that DirectBuy is a "members only club, " and therefore "very limited information regarding the Martin Doors that DirectBuy sells is available to the public." Compl. ¶ 50.
On March 3, 2014, Martin Door filed an Answer and a Motion to Dismiss for Lack of Personal Jurisdiction and Improper Venue, or, in the Alternative to Tnansfer Venue. ECF Nos. 6 and 8. In that motion, Martin Door does not deny that its products are sold in Maryland, or that DirectBuy and Awning Concepts are retailers of Martin Door products. Instead, it argues that any connections it has with Maryland are insufficient to give rise to personal jurisdiction. In this regard, Martin Door notes that it has no offices, phone listings, mailing addresses, agents, representatives, employees, property, or bank accounts in Maryland, and that it does not store any inventory in Maryland. Mot. Dismiss at 3-4. It argues that it "intentionally limits the geographic extent to which [it] delivers garage doors to exclude Maryland": Martin Door garage doors bound for Maryland are placed "with a common carrier who transports the garage door to the customer pursuant to the customer's instructions." Id. It further argues that any sales in Maryland amount to "less than one-tenth of one percent" of its yearly revenues. Id. at 4. In regard to its internet presence, Martin Door argues that its website is "informational only" because no Martin Door products can be purchased through the site. Id.
On March 6, 2014, DirectBuy filed an Answer and a Motion to Dismiss for Lack of Personal Jurisdiction. ECF Nos. 11 and 12. In that motion, DirectBuy docs not deny that the three showrooms FrenchPorte identified-DirectBuy of Columbia. DirectBuy of Washington North, and DirectBuy of Southern Maryland-sell Martin Door products. Rather, DirectBuy asserts that those three Maryland showrooms are "independently owned and operated franchise[s], " and therefore that DirectBuy "does not control or direct the[ir] business transactions" and "derives no revenue from the sale or use of Martin Door garage doors in Maryland." Mot. Dismiss at 2. DirectBuy thus concludes that it "has no obligation or liability related to the sale of any Martin Door garage doors" by those franchises. Id. Accordingly, DirectBuy asserts that it lacks sufficient contacts to be subject to personal jurisdiction in Maryland. In this regard, DirectBuy notes that it has no offices, phone listings, mailing addresses, or bank accounts in Maryland, and that it has no representatives "working in Maryland to sell Martin Door garage doors." Id. at 2-3.
On March 27, 2014, FrenchPorte filed a Response in Opposition to Martin Door's and DirectBuy's Motions to Dismiss for Lack of Personal Jurisdiction. ECF No. 16. On April 21, 2014, Martin Door and DirectBuy each tiled a Reply to FrenchPorte's Response. ECF Nos. 20 and 21. On June 20, 2014. FrenchPorte filed a Motion for Expedited Jurisdictional Discovery seeking discovery from Martin Door, a motion that Martin Door opposed on July 10, 2014. ECF Nos. 26 and 27. On July 28, 2014, FrenchPorte tiled a Reply to Martin Door's Response. ECF No. 28.
I. The Timeliness of the Motions to Dismiss
On March 3, 2014, Martin Door filed its Answer at 10:30 a.m. followed by its Motion to Dismiss for Lack of Personal Jurisdiction at 10:44 a.m. See ECF Nos. 6 and 8. On March 6, 2014, DirectBuy filed its Answer at 5:33 p.m. followed by its Motion to Dismiss for Lack of Personal Jurisdiction at 5:42 p.m. See ECF Nos. 11 and 12. As FrenchPorte points out, see Opp'n Mot. Dismiss at 5, Martin Door and DirectBuy have thus failed to follow the clear requirements of Federal Rule of Civil Procedure 12(b), which directs defendants to file a motion asserting a defense under Rule 12 " before pleading if a responsive pleading is allowed" (emphasis added). Under a strict reading of Rule 12, then, Martin Door's and DirectBuy's motions are untimely and, as a consequence, they have waived their personal jurisdiction defenses. See Fed.R.Civ.P. 12(b) ("A motion asserting any [12(b)] defenses must be made before pleading"); Fed.R.Civ.P. 12(h)(1)(B)(i) (stating that a party waives a 12(b)(2) defense if it fails to make it by motion in accordance with the rule or include it in a responsive pleading); Steven S. Gensler, I Federal Rules of Civil Procedure: Rules and Commentary, Rule 12 (2014), available at Westlaw FRCP-RC ("There are four defenses-lack of personal jurisdiction, improper venue, insufficiency of process, and insufficiency of service of process-that are forfeited if not raised in the defendant's first response to the complaint....").
However, that strict reading of Rule 12 is not warranted here. Although Martin Door and DirectBuy could have avoided this problem by uploading their Motions before their Answers, their filing sequences are essentially a product of the constraints of the Court's electronic filing system, which requires that an answer and a motion be uploaded separately and thus sequentially. As a practical matter, Martin Door and DirectBuy filed their respective Answers and Motions contemporaneously, and the Court will treat them as so filed.
Treating Martin Door's and DirectBuy's Answers and Motions as contemporaneously filed does not, however, immediately resolve the question of the timeliness of the Motions to Dismiss. A number of courts-including in this District-have deemed untimely Rule 12(b) motions filed contemporaneously with an answer. See, e.g., Young v. Prince George's Cnty., MD, No. DKC-11-1970, 2012 WL 1205105, at *2 (D. Md. Apr. 10, 2012) ("[B]ecause Defendants' motion was tiled contemporaneously with their partial answer, ' treating the motion as one to dismiss pursuant to Rule 12(b)(6) is improper."); BAC Home Loans Servicing LP v. Fall Oaks Farm LLC, 848 F.Supp.2d 818, 822 (S.D. Ohio 2012) ("Rule 12(b) permits only sequential, not concurrent, filing of a motion to dismiss and an answer."). Other courts have indicated in dicta that Fed R. Civ. P. 12(b) motions are timely if filed contemporaneously with the answer. See, e.g., Roque v. United States, 857 F.2d 20, 21 (1st Cir. 1988); Imperial Crane Servs. v. Cloverdale Equip. Co., No. 13-C-04750, 2013 WL 5904527 at n.7 (N.D. Ill. Nov. 4, 2013).
Although these cases appear to offer opposing interpretations of Fed R. Civ. P. 12(b), upon closer examination they can be harmonized. Courts have read the filing requirements of Rule 12(b) strictly, and so deemed a motion filed contemporaneously with an answer as untimely, when the motion is a Rule 12(b)(6) motion; courts have given the filing requirements a more flexible interpretation, and so deemed a motion filed contemporaneously with an answer as timely, when the motion is made under Rule 12(h)(2)-(5). Compare Young, 2012 WL 1205105, at *2 (requiring a 12(b)(6) motion to precede the answer), and BAC Home Loans, 848 F.Supp.2d at 822 (same), with Roque, 857 F.2d at 21 (stating that a 12(b)(5) motion may be filed contemporaneously with an answer), and Imperial Crane Servs., 2013 WL 5904527 at n.7 (stating that a 12(b)(2) motion may be filed contemporaneously with an answer).
The implicit logic is sensible. There is more at stake in 12(b)(2)-(5) motions than in a 12(b)(6) motion. The defenses under 12(b)(2)-(5) are lost if not timely asserted; the ground for dismissal under 12(b)(6) remains available throughout a case, albeit with a different name. See Fed R. Civ. P. 12(c); BAC Home Loans, 848 F.Supp.2d at 823 (noting, when reading the rules strictly in the context of a 12(b)(6) motion, that doing so "presents no substantive prejudice... because [the defendant] can simply make its arguments post-answer through another mechanism that complies with the Civil Rules"). Because, here, a strict interpretation of the procedural requirements of Rule 12 would deprive Martin Door and DirectBuy of their personal jurisdiction defense, a more permissive ...