`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
`
`THE CHAMBERLAIN GROUP, INC.,
`Plaintiff,
`
`v.
`TECHTRONIC INDUSTRIES CO.,
`LTD., TECHTRONIC INDUSTRIES
`NORTH AMERICA, INC., ONE
`WORLD TECHNOLOGIES, INC.,
`OWT INDUSTRIES, INC., ET
`TECHNOLOGY (WUXI) CO. LTD.,
`and RYOBI TECHNOLOGIES, INC.,
`Defendants.
`
`Case No. 16 C 6097
`Judge Harry D. Leinenweber
`
`MEMORANDUM OPINION AND ORDER
`Plaintiff The Chamberlain Group, Inc. (“Chamberlain”)
`brings this action for patent infringement, alleging that
`certain models of Ryobi-branded garage door openers (“GDOs”)
`infringe two patents it holds on the same technology.
`Before
`the Court is Defendant Techtronic Industries Co. Ltd.’s (“TTI
`HK”) Motion to Dismiss under Rule 12(b)(2) for lack of personal
`jurisdiction [ECF No. 379]. For the reasons stated herein, the
`Court denies the Motion.
`
`I. BACKGROUND
`Defendant TTI HK is an investment holding company based in
`Hong Kong. Its products include power tools, outdoor goods, and
`floor care products sold under several household brand names,
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`Chervon (HK) Limited
`Exhibit 2024 - Page 1
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`including Milwaukee, Hoover, Oreck, and Ryobi. TTI HK has a
`number of subsidiaries based in Asia and the United States.
`Defendant Techtronic Industries North America, Inc. (“TTI NA”)
`is one such subsidiary, but its activities are strictly
`administrative.
`Defendant One World Technologies, Inc. (“One
`World”) is a wholly-owned subsidiary of TTI NA that does much of
`the heavy lifting in North America for TTI HK’s Ryobi products.
`(Confusingly, One World previously conducted its business under
`the TTI NA name.)
`Techtronic Trading Limited (“TTI Trading”) is
`another wholly-owned subsidiary of TTI HK, and it ships TTI HK
`products from Asia to the United States. TTI HK and TTI Trading
`share a logo, address, and an office at Kowloon Commerce Center,
`Tower 2, floor 29/F, Kwai Chung, Hong Kong.
`In a concurrent proceeding before the International Trade
`Commission (the “ITC”) between the parties to this lawsuit, One
`World’s president, Michael Farrah (“Farrah”), testified on
`behalf of One World, TTI NA, and TTI HK as follows: “Q. You’re
`not sure which legal entity – entity Techtronic Industries
`Company Limited falls under? A. No. They’re partners – our co-
`development partners, really, part of our company.
`We treat
`them as our company. And I’m not sure what – you know, who pays
`them, for instance, which legal entity.” (ECF No. 410 (“Pl.’s
`Resp.”), Ex. P at 486:1-9.)
`Recounting a visit to the “Hong
`Kong office,” Farrah also could not distinguish between TTI HK
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`and TTI Trading. He recanted a prior sworn statement in which
`he denied that TTI HK imported the accused Ryobi GDOs, averring
`instead that TTI HK “facilitated” importation of the Ryobi GDOs
`into the U.S. (See, generally, Pl.’s Resp. at Ex. P.)
`TTI HK’s CEO, Joseph Galli (“Galli”), is Farrah’s direct
`report.
`In an email to Galli captioned “New Business Category
`Approval Request,” Farrah first introduced the Ryobi GDO project
`as “a very exciting opportunity with The Home Depot” that “will
`deliver TTI $36M in net sales @ 28%GGM and 8.7% EBIT in year 1
`and then grow to $45M at and 33% GGM and an 13.2% EBIT in
`year 3.” (Pl.’s Resp. at Ex. G.) Farrah “look[ed] forward to
`approval so we can move this program ahead.” (Ibid.)
`Once
`development was approved, Galli asked to be kept abreast of “any
`Home Depot meetings/decisions on” the Ryobi GDO opportunity.
`(Id. at Ex. H.) Galli, TTI HK’s Chief Financial Officer, and
`TTI HK’s Deputy Chief Financial Officer approved line-by-line
`capital expenditures relating to the project – including $90,925
`for a testing facility, $135,395 for an “environmental chamber,”
`$138,408 for certain Ryobi GDO modules, and $815,697 for the
`program itself. (Pl.’s Resp. at Exs. I-O.)
`As relevant, TTI Trading purchases the Ryobi GDOs from a
`Chinese manufacturer, Defendant ET Technology (WUXI) Co. Ltd.
`(“ET Door”) – with whom TTI HK presumably has an agreement - and
`imports them to various ports in California and South Carolina.
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`Chervon (HK) Limited
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`Once there, title to the GDOs passes to One World, who sells
`them to The Home Depot – the exclusive retailer of all Ryobi
`GDOs in the U.S. – for sale at its stores to end users. Around
`50 percent of TTI HK’s total sales (and approximately 90 percent
`of One World’s sales) are to The Home Depot.
`(Of TTI HK’s
`roughly $5.5 billion in revenue in 2016, sales at The Home Depot
`accounted for more than $2.7 billion.) Galli tracks the sales
`of One World’s products to The Home Depot on a weekly basis, and
`has requested sales information for just the Ryobi GDOs.
`A visitor to TTI HK’s website can click on the Ryobi USA
`brand link, which navigates them to the homepage for Ryobi
`Tools.
`From there, a user can select “Garage Door Openers,” and
`the first item presented is the allegedly infringing Ryobi GDO.
`From the landing page for that product, the user can choose to
`“Buy at The Home Depot,” and he or she is then redirected to The
`Home Depot’s online store where they can purchase it.
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`The Home Depot has a total of 76 stores in Illinois; only
`five States have more. In 2016, gross U.S. sales revenue of the
`accused Ryobi GDO totaled approximately $9.5 million. One World
`sells the GDOs not just to The Home Depot’s headquarters but
`directly to certain store locations, including over 750 GDOs to
`a Joliet, Illinois location.
`In addition, One World has held
`training seminars and advertised in Illinois Home Depot stores.
`The Home Depot has honored TTI HK’s Ryobi-branded products with
`various awards for innovation and marketing, recognizing TTI HK
`as both a “top partner” and “the 2016 Home Depot US Partner of
`the Year.” Commenting on these awards, Galli on behalf of TTI
`HK stated that “[t]he TTI organization is delivering a
`continuous flow of compelling and innovative new products.”
`(Pl.’s Resp. at Exs. X-Z.)
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`Chervon (HK) Limited
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`II. DISCUSSION
`TTI HK seeks dismissal of all claims against it for lack of
`personal jurisdiction under Rule 12(b)(2). There is no dispute
`that TTI HK has no direct or advertising presence in Illinois;
`has never employed anyone in Illinois, maintained a registered
`agent in Illinois, or paid taxes in Illinois; has never owned,
`leased, possessed, or maintained any real or personal property
`in Illinois; and has never itself manufactured, produced,
`marketed, imported, or sold any products in Illinois.
`The
`question sub judice is whether Chamberlain has made a prima
`facie showing that TTI HK is subject to specific personal
`jurisdiction in Illinois based on its role in approving,
`monitoring, and overseeing both the development of the allegedly
`infringing Ryobi GDOs and their sale to an exclusive distributor
`with a heavy Illinois presence. Because the Court answers this
`question in the affirmative, it stops short of considering the
`alternative ground for jurisdiction - imputation to TTI HK of
`its subsidiaries’ Illinois contacts.
`A. Legal Standard
`Federal Circuit law controls whether personal jurisdiction
`exists over an out-of-state defendant in a patent infringement
`case.
`See, Hildebrand v. Steck Mfg. Co., Inc., 279 F.3d 1351,
`1354 (Fed. Cir. 2002). When personal jurisdiction is challenged
`under Fed. R. Civ. P. 12(b)(2) without the benefit of an
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`evidentiary hearing, the plaintiff must “make a prima facie
`showing that defendants are subject to personal jurisdiction.”
`Elecs. For Imaging, Inc. v. Coyle, 340 F.3d 1344, 1349 (Fed.
`Cir. 2003); accord, Purdue Res. Found. v. Sanofi-Synthelabo,
`S.A., 338 F.3d 773, 782 (7th Cir. 2003). In such circumstances,
`courts are not limited to consideration of facts alleged in the
`complaint, but may also consider affidavits and other written
`materials.
`See, Autogenomics, Inc. v. Oxford Gene Tech. Ltd.,
`566 F.3d 1012, 1017 (Fed. Cir. 2009).
`The law of the Federal and Seventh Circuits is in harmony
`on the question whether the Court may exercise jurisdiction
`here:
`the forum State’s long-arm statute must permit service of
`process, and exercise of personal jurisdiction must comport with
`due process.
`Compare, Grober v. Mako Prods., Inc., 686 F.3d
`1335 (Fed. Cir. 2012); with, e.g., Felland v. Clifton, 682 F.3d
`665, 672 (7th Cir. 2012).
`The Illinois long-arm statute
`authorizes personal jurisdiction to the full extent permitted by
`either the Illinois Constitution or the federal Constitution,
`735 Ill. Comp. Stat. 5/2-209(c), meaning that the state
`statutory and federal constitutional requirements merge. uBID,
`Inc. v. The GoDaddy Group, Inc., 623 F.3d 421, 425 (7th Cir.
`2010).
`Specific personal jurisdiction is a more limited assertion
`of state power than general personal jurisdiction, which
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`Chervon (HK) Limited
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`Chamberlain does not advance as a basis for jurisdiction over
`TTI HK in this case.
`Specific jurisdiction exists only for
`controversies that arise out of or are related to the
`defendant’s purposeful availment of the forum. See, Hyatt Int’l
`Corp. v. Coco, 302 F.3d at 707, 713 (7th Cir. 2002). Exercise
`of specific personal jurisdiction in a patent infringement case
`comports with due process where: (1) the defendant purposefully
`directed activities at forum residents; (2) the claim arises out
`of or relates to those activities; and (3) asserting personal
`jurisdiction is reasonable and fair. AFTG-TG, LLC v. Nuvoton
`Tech. Corp., 689 F.3d 1358, 1361 (Fed. Cir. 2012) (citation
`omitted).
`The specific jurisdiction inquiry centers “on the
`relationship among the defendant, the
`forum, and the
`litigation.”
`Walden v. Fiore, 134 S.Ct. 1115, 1121 (2014).
`B. Specific Personal Jurisdiction
`1. Purposeful Availment
`Chamberlain argues that specific jurisdiction over TTI HK
`in Illinois is proper on the basis that it directed the
`development of the accused Ryobi GDO, relies on and monitors GDO
`sales in populated states like Illinois through The Home Depot’s
`retail stores, and ultimately benefits immensely therefrom.
`According to Chamberlain’s evidence, development and financial
`feasibility of the Ryobi GDO project were premised from the
`outset on TTI HK’s exclusivity arrangement with The Home Depot
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`and on the retailer’s distribution network; Galli and other TTI
`HK personnel approved line-by-line capital expenditures for One
`World to develop and bring the Ryobi GDO to market; and Galli,
`by requesting updates and continuously monitoring both One
`World’s sales to The Home Depot and the retailer’s sales to
`consumers, expects and knows that the GDOs are being sold to
`Illinois consumers.
`Chamberlain also notes that TTI HK’s
`website (indirectly through the Ryobi regional website) links to
`The Home Depot’s online store, where Illinois customers can
`purchase the infringing product. Apart from these sales-based
`activities, Chamberlain points to Farrah’s ITC testimony and
`charges TTI HK with “facilitating” importation of the Ryobi GDOs
`into the U.S., a significant percentage of which are inexorably
`sold in Illinois thanks to The Home Depot’s 76 stores in the
`state.
`TTI HK responds that it has no role in the manufacture,
`importation, or sale of the Ryobi GDOs – but that ET Door, TTI
`Trading, and One World are the entities responsible for these
`allegedly infringing activities. TTI HK argues that, without a
`more robust nexus, its knowledge of eventual sales of Ryobi GDOs
`to Illinois residents is legally insufficient to subject it to
`jurisdiction. Further, it maintains that it merely operates a
`“passive” (as opposed to an “interactive”) website that does not
`allow any Illinois resident to purchase a Ryobi GDO.
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`The stream-of-commerce theory governing exercise of
`specific personal jurisdiction is set forth in Asahi Metal
`Indus. Co. v. Superior Court of Cal., Solano Cnty., 480 U.S. 102
`(1987), and J. McIntyre Mach., Ltd. v. Nicastro, 131 S.Ct. 2780
`(2011).
`In both cases, the Supreme Court struggled to coalesce
`around a framework for purposeful availment. Under one theory,
`“placement of a product into the stream of commerce, without
`more, is not an act of the defendant purposefully directed
`toward the forum State,” and the defendant instead must engage
`in “additional conduct” showing an intent to serve the forum
`state’s market.
`Asahi, 480 U.S. at 112.
`The second theory
`requires only knowledge that the final product is being marketed
`and sold in the forum state and that such sales were part of the
`“regular and anticipated flow” of manufacture, distribution, and
`sale in the forum. Seventh and Federal Circuit precedent “leave
`open the possibility that a foreign manufacturer, who places its
`product into the stream of commerce in the United States, may be
`subject to jurisdiction in a state where that product causes an
`injury and where there is a regular flow of its product or
`regular course of sales in that state.”
`In re Testosterone
`Replacement Therapy Prods. Liab. Litig., No. 14 C 1748, 2016 WL
`5890022, at *3 (N.D. Ill. Oct. 10, 2016); see also, AFTG-TG, 689
`F.3d at 1363 (noting that “the Supreme Court’s framework
`applying the stream-of-commerce theory –
`including the
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`conflicting articulations of that theory in Asahi – had not
`changed” in Nicastro).
`Even under the more stringent test, however, TTI HK is
`subject to specific personal jurisdiction in this action. Two
`Federal Circuit guideposts help delineate the crucial “something
`more” required:
`whether the defendant to some degree selects or
`controls the distribution process accounting for the accused
`product’s presence in the forum state. First, in Beverly Hills
`Fan Co. v. Royal Sovereign Corp., 21 F.3d 1558 (Fed. Cir. 1994),
`the plaintiff named as defendants the manufacturer and
`distributor of an allegedly infringing fan that turned up for
`sale in the local outlet of a chain store.
`The plaintiffs
`adduced evidence that a private investigator “purchased the
`allegedly infringing fan at a chain store with about six outlets
`in the forum state and that the fans were available for purchase
`at the other outlets as well.” Id. at 1560-61.
`Ruling that the
`defendants placed the accused fans in the stream of commerce
`with knowledge of their likely destination, the court reasoned
`that the “presence of an established distribution channel”
`suggested an “expectation” that the fans “will be purchased by
`consumers in the forum state.”
`Ibid. (quotation and internal
`quotation marks omitted).
`Then, in Red Wing Shoe Co. v. Hockerson-Halberstadt, Inc.,
`148 F.3d 1355 (Fed. Cir. 1998), the court found personal
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`jurisdiction lacking where the defendant patent holder entered
`into licensing agreements with companies that manufactured or
`marketed certain athletic shoes. Id. at 1357. The court held
`that the defendant had no control over its licensees and their
`products, and therefore personal jurisdiction could not be
`premised on a stream-of-commerce theory – notwithstanding that
`the defendant received royalty income from sales made in the
`forum state by its licensees. Moreover, the defendant’s product
`was merely “a covenant not to sue, not a shoe incorporating the
`patented technology,” and so it never placed a product into the
`stream of commerce of the forum state. Id. at 1362.
`patent
`Applying
`these
`precedents,
`courts
`hearing
`infringement disputes in this District have found specific
`personal jurisdiction over a foreign manufacturer who “sold the
`allegedly infringing products to two distributors with multiple
`stores in Illinois.”
`Original Creations, Inc. v. Ready America,
`Inc., 836 F.Supp.2d 711, 716-18 (N.D. Ill. 2011) (noting that
`the foreign defendant “established distribution channels in
`Illinois such that it ‘knew the likely destination’ of its
`products and established ‘connections with the forum state’”)
`(quoting Beverly Hills Fan, 21 F.3d at 1566). More recently,
`another sister court applied a corollary articulated by the D.C.
`Circuit to the more stringent “something more” standard,
`reposing its finding of personal jurisdiction in the foreign
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`corporation’s opting for – and knowledge that it was enjoying -
`a “‘regular flow or regular course of sales’” in the forum
`state. In re Testosterone, 2016 WL 5890022, at *3 (quoting
`Williams v. Romarm, S.A., 756 F.3d 777, 785 (D.C. Cir. 2014)).
`While the defendant drug manufacturer did not itself “engage in
`any marketing or sale of the drug within the United States,” it
`retained a distributor who sold the drug in the U.S. and
`remitted royalty payments to the tune of over $600 million.
`See, In re Testosterone, 2016 WL 5890022 at *3 (“From these
`figures, as well as from plaintiffs’ evidence that Besins
`employees received regular updates on the United States market
`and sales of AndroGel, the Court can reasonably infer that
`Besins knew that a regular and significant flow of the AndroGel
`it manufactured would end up in each of the forum states.”)
`(emphasis added).
`Unlike Red Wing, this case involves a foreign company who
`approved and allocated capital necessary to develop and bring to
`market the allegedly infringing product, and it had at least
`some say in the decision to continue exploiting a longstanding
`distribution channel that inexorably deposits a significant
`number of the products at issue in Illinois. As in Original
`Creations, TTI HK takes advantage of a retail network – one
`whose exclusivity is mandated for all its Ryobi products – that
`has
`obvious (not merely random or fortuitous) Illinois
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`Similar to In re Testosterone, TTI HK’s knowledge
`consequences.
`of the regular flow of products into Illinois cannot seriously
`be questioned, given Galli’s requests for and receipt of regular
`sales updates.
`Regardless of whether an Illinois resident can
`purchase a Ryobi GDO “from” TTI HK by virtue of its website’s
`indirect links to The Home Depot’s online store – or whether, as
`TTI HK contends, its website is merely “passive” - it is further
`proof of TTI HK’s purposeful and exclusive availment of the
`retailer’s Illinois-heavy distribution network.
`Cases declining to find personal jurisdiction where sales
`by a foreign manufacturer’s subsidiary led to the fortuitous
`presence of the defendant’s products in the forum state, are not
`dispositive.
`In Tile Unlimited, Inc. v. Blanke Corp., 47
`F.Supp.3d 750 (N.D. Ill. 2014), for example, the defendant
`manufacturer’s subsidiary contracted equally with several
`distributors, only one of whom sold products into the forum
`state.
`See, id. at 755-56 (“Once the Uni-Mat reached the Blanke
`USA warehouse in Georgia [from the foreign defendant’s
`subsidiary], Blanke USA would sell the product to Virginia Tile
`and other distributors who would distribute the product
`throughout the United States.
`Tile Unlimited, an Illinois
`corporation with its principal place of business in Illinois,
`claims that it purchased Uni-Mat from Virginia Tile. . . .”)
`On
`the contrary, conceptualization, development, importation, and
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`sales of TTI HK’s Ryobi GDOs were and are tied to an exclusive
`distribution arrangement contemplating thousands of sales in the
`forum state. What is more, the number of Home Depot stores in
`Illinois (76), in both an absolute sense and relative to other
`states, allows the Court to draw the reasonable inference that
`the sales in Illinois of Ryobi GDOs as a percentage of TTI HK’s
`GDO revenues is vastly more substantial than the few thousand
`dollars in Tile Unlimited or the four machines in Nicastro.
`Cf., uBID, Inc., 623 F.3d at 428-29 (holding that “GoDaddy
`purposefully availed itself of the Illinois market for its
`services through its deliberate and continuous exploitation of
`that market”).
`Seeking to distinguish this case law, TTI HK argues that it
`does not manufacture the accused Ryobi GDOs, import them into
`the U.S., or contract with The Home Depot for their sale.
`But
`“Nicastro does not stand for the proposition that if a defendant
`places goods into the stream of commerce via a third-party
`distributor who causes those goods to be sold in [the forum
`state,] it can never be subject to personal jurisdiction in [the
`forum state].” Appjigger GmbH v. Blu Prod., Inc., No. 14 C 9650,
`2015 WL 3463413, at *5 (N.D. Ill. May 29, 2015). Doubtless, the
`law of personal jurisdiction – notoriously thorny and fact-
`specific – would be more lucid if the seminal cases recognized
`the sort of formal distinction TTI HK advocates. Alas, it is
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`not so facile as to hale into federal court only those foreign
`companies that operate the machines of manufacture or the
`instrumentalities of importation.
`See, e.g., World-Wide
`Volkswagen, 444 U.S. at 297-98 (“The forum State does not exceed
`its powers under the Due Process Clause if it asserts personal
`jurisdiction over a corporation that delivers its products into
`
`the stream of commerce with the expectation that they will be
`purchased by consumers in the forum State.”) (emphasis added).
`While TTI HK may not physically manufacture, import, or sell its
`Ryobi products to The Home Depot, there is no question that it
`has at least some control over their deliverance into the stream
`of commerce that inexorably deposits them in Illinois. Recall
`that Galli, acknowledging TTI HK’s receipt of The Home Depot’s
`awards, poignantly pronounced that “[t]he TTI organization is
`delivering a continuous flow of compelling and innovative new
`products.”
`TTI HK banked on their regular flow into Illinois
`when it approved and allocated expenses for One World to develop
`the Ryobi GDOs for exclusive sale to The Home Depot; its CEO,
`Galli, monitors their distribution and reviews sale reports,
`confirming that the GDOs indeed reach Illinois; and TTI HK
`ultimately benefits from the entire arrangement, which was the
`impetus for Farrah’s initial overture to Galli.
`Absent some indication contrary to all the evidence that
`its subsidiaries act unilaterally in availing themselves of the
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`forum, see, Purdue, 338 F.3d at 780, or that it is a mere
`licensor of the Ryobi name with no opportunity to control the
`GDOs’ distribution, see, Red Wing, 148 F.3d at 1362, TTI HK
`purposefully avails itself of the privilege of doing business in
`Illinois.
`
`2. Relatedness
`Rehashing its earlier argument, TTI HK contends that it is
`not subject to personal jurisdiction because Chamberlain has not
`shown the relatedness of any purposeful availment to this patent
`infringement action.
`TTI HK notes that patent infringement
`occurs when a party “without authority makes, uses, offers to
`sell or sells any patented invention, within the United States
`or imports into the United States any patented invention during
`the term of the patent.”
`35 U.S.C. § 271(a).
`Thus, its
`argument goes, for there to be specific personal jurisdiction
`over TTI HK in Illinois, Chamberlain “would have to allege that
`[TTI HK] did one of these listed activities in” Illinois.
`HollyAnne Corp. v. TFT, Inc., 199 F.3d 1304, 1308 (Fed. Cir.
`1999).
`However, the Patent Act sweeps more broadly than TTI HK
`suggests, applying to “[w]hoever actively induces infringement
`of a patent” and rendering such a person or entity “liable as an
`infringer.”
`35 U.S.C. § 271(b).
`For its part, Chamberlain
`claims that TTI HK “facilitated” importation into the U.S. of
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`Chervon (HK) Limited
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`Case: 1:16-cv-06097 Document #: 517 Filed: 08/08/17 Page 18 of 22 PageID #:<pageID>
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`the allegedly infringing Ryobi GDOs and otherwise actively
`induced
`its subsidiaries –
`particularly, TTI Trading and
`Defendant One World - to engage in the activities prohibited by
`the statute. While its burden to show liability will require
`greater
`proof
`that TTI HK in fact did so, Chamberlain’s
`allegations and jurisdictional evidence suffice to defeat TTI
`HK’s Motion to Dismiss.
`To the extent TTI HK’s argument is
`premised on the idea that actions in Illinois must be the
`exclusive ground of the complaint, this is incorrect.
`“Such
`reasoning would allow defendants with allegedly infringing
`activities in multiple states to argue that personal
`jurisdiction did not lie in any state because the activities in
`the plaintiff’s chosen forum were not necessary to the cause of
`action.”
`HollyAnne, 199 F.3d at 1308 n.4 (noting also that the
`proper test is whether the activity in the forum state “is a
`basis for the cause of action”).
`Therefore, TTI HK’s targeting of Illinois consumers and
`purposeful availment of the forum with respect to its Ryobi GDO
`products is sufficiently related to Chamberlain’s claim that,
`for example, importation and sale of those products infringes
`its patents.
`
`C. Fair and Reasonable
`After a plaintiff has shown that the cause of action is
`related to or arises out of the defendant’s purposeful availment
`
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`Chervon (HK) Limited
`Exhibit 2024 - Page 18
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`of the forum, “it becomes defendants’ burden to present a
`‘compelling case that the presence of some other considerations
`would render jurisdiction unreasonable.’”
`Coyle, 340 F.3d at
`1351-52 (quoting Burger King Corp. v. Rudzewicz, 471 U.S. 462,
`477 (1985)). Factors that are relevant to the reasonableness
`inquiry include:
`“‘the burden on the defendant, the forum
`State’s interest in adjudicating the dispute, the plaintiff’s
`interest in obtaining convenient and effective relief, the
`interstate judicial system’s interest in obtaining the most
`efficient resolution of controversies, and the shared interest
`of the several States in furthering fundamental social
`policies.’”
`Patent Rights Protection Group, LLC v. Video Gaming
`Techs., Inc., 603 F.3d 1364, 1369 (Fed. Cir. 2010) (quoting
`Burger King, 471 U.S. at 476-77).
`The ultimate constitutional
`lodestar is whether it is “fair and reasonable to call the
`defendant into the state’s courts to answer the plaintiff’s
`claim.”
`uBID, 623 F.3d at 426.
`The burden par excellence on a foreign defendant is a
`travel burden, and it is certainly a long flight from Hong Kong
`to Chicago. Worth keeping in mind, however, is the fact that
`“out-of-state defendants always face such a burden,” Felland v.
`682 F.3d 665, 677 (7th Cir. 2012) (emphasis in
`Clifton,
`original), and the extent to which “modern methods of
`transportation and communication have significantly ameliorated
`
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`Chervon (HK) Limited
`Exhibit 2024 - Page 19
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`[the] burden” of defending suit in a forum other than one’s
`residence.
`Sculptchair, Inc. v. Century Arts, Ltd., 94 F.3d
`623, 632 (11th Cir. 1996) (citation omitted); see, Menken v.
`Emm, 503 F.3d 1050, 1060 (9th Cir. 2007) (“[W]ith the advances
`in transportation and telecommunications and the increasing
`interstate practice of law, any burden [of litigation in a forum
`other than one’s residence] is substantially less than in days
`past.”); see also, Synthes (U.S.A.) v. G.M. Dos. Reis Jr. Ind.
`Com de Equip. Medico, 563 F.3d 1285, 1299 (Fed. Cir. 2009)
`(same).
`Also warranting a mention is the burden on an
`international defendant inherent in navigating a foreign legal
`system.
`See, Asahi, 480 U.S. at 114. Yet these concerns too
`are somewhat mitigated here; TTI HK has retained U.S. counsel
`based in Illinois to litigate this case and the parallel ITC
`proceeding, and counsel appears to have ably represented its
`interests.
`Therefore, the first factor weighs against a finding
`of fairness, but only slightly; traveling to Illinois from Hong
`Kong – to the extent such travel is necessary in this patent
`infringement action - does burden TTI HK.
`However, the other applicable factors militate in favor of
`exercising specific personal jurisdiction over TTI HK in
`Illinois.
`The second factor – the forum state’s interest in
`adjudicating the dispute – weighs significantly in favor of a
`finding of fairness.
`Illinois’s interest in this patent
`
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`Chervon (HK) Limited
`Exhibit 2024 - Page 20
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`Case: 1:16-cv-06097 Document #: 517 Filed: 08/08/17 Page 21 of 22 PageID #:<pageID>
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`infringement action, which involves the rights of an Illinois
`company and allegedly infringing products sold to Illinois
`consumers, is compelling. “Illinois has a strong interest in
`adjudicating injuries that occur within the state, and this
`interest
`extends
`to
`patent
`infringement
`actions.”
`CoolSavings.Com, Inc. v. IQ.Commerce Corp., 53 F.Supp.2d 1000,
`1005 (N.D. Ill. 1999) (citation omitted).
`In addition, the
`third factor concerning the plaintiff’s interest in obtaining
`convenient and effective relief weighs slightly in favor of a
`fairness finding.
`Illinois is the most convenient forum for
`Illinois-based Chamberlain to pursue its claims.
`The fourth and fifth factors – the interstate judicial
`system’s interest in obtaining the most efficient resolution of
`controversies, and the shared interests of the States in
`furthering fundamental social policies – have little purchase
`here, as the case involves the application of uniform federal
`patent law, not state law. See, e.g., Litmer v. PDQUSA.com, 326
`F.Supp.2d 952, 959-60 n.8 (N.D. Ind. 2004).
`As such, balancing the relevant factors in this case
`supports the exercise of specific personal jurisdiction over TTI
`HK in Illinois. “[L]ike the Chinese defendant in Beverly,” TTI
`HK’s “mere foreign status does not outweigh these interests.”
`Worldtronics Int’l, Inc. v. Ever Splendor Enter. Co., Inc., 969
`F.Supp. 1136, 1142 (N.D. Ill. 1997) (citing Beverly Hills Fan,
`
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`Chervon (HK) Limited
`Exhibit 2024 - Page 21
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`Case: 1:16-cv-06097 Document #: 517 Filed: 08/08/17 Page 22 of 22 PageID #:<pageID>
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`21 F.3d at 1569); see also, Original Creations, 836 F.Supp.2d at
`719 (“The burdens on [the foreign defendant] are not enough to
`overcome the interests of the state and [the plaintiff]. Though
`travel is a burden, it is not generally a reason to find
`jurisdiction unreasonable.”) (citation omitted).
`III. CONCLUSION
`For the reasons stated herein, Defendant TTI HK’s Motion
`to Dismiss [ECF No. 379] is denied.
`
`IT IS SO ORDERED.
`
`Dated: August 8, 2017
`
`Harry D. Leinenweber, Judge
`United States District Court
`
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`Chervon (HK) Limited
`Exhibit 2024 - Page 22
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`