United States District Court, M.D. Florida, Tampa Division
R.D. JONES, STOP EXPERTS, INC., and RRFB GLOBAL, INC., Plaintiffs,
J.S. FOSTER CORP., Defendant.
D. WHITTEMORE District Judge.
THE COURT is Defendant J.S. Foster Corp.'s Motion to
Dismiss for Lack of Personal Jurisdiction (Dkt. 33),
Plaintiffs' response in opposition (Dkt. 45), and
Defendant's reply (Dkt. 49). Upon consideration, the
motion to dismiss is granted.
R.D. Jones, Stop Experts, Inc. and RRFB Global, Inc.
("Plaintiffs") allege that Defendant J.S. Foster
Corp. d/b/a JSF Technologies ("JSF") infringed two
patents relating to a traffic control device known as a rapid
rectangular flashing beacon or "RRFB." (Dkt. 1 at
¶ 1) An RRFB uses flashing light patterns to improve
driver compliance at pedestrian crossings. (Id. at
¶ 20) According to Plaintiffs, JSF's devices use
Plaintiffs' patented flash patterns. (Id. at
¶¶ 45-48) Although Plaintiffs originally sued a
second defendant, Transportation Control Systems Inc.
("TCS"), Plaintiffs dismissed those claims without
prejudice on August 4, 2016. (Dkt. 24)
to the jurisdictional inquiry, JSF is a Canadian corporation
with its principal place of business in Saanichton, British
Columbia. (Dkt. 1 at ¶ 4) JSF manufactures several
different types of traffic control beacon systems and
components, including RRFBs. (Dkt. 33-1 at ¶ 3) JSF has
one Florida customer-former defendant TCS-but JSF did not
sell RRFBs to TCS. (Id. at ¶ 21). JSF instead
sold parts for 24-hour warning sign beacons. (Id.)
As detailed below, JSF has no other corporate presence in
Florida, and JSF's relevant contact with the state is
limited to exhibiting an RRFB at one trade show in Orlando.
motion to dismiss for lack of personal jurisdiction is
governed by a two-part analysis. First, a court determines
whether the plaintiff has alleged facts sufficient to subject
the defendant to the applicable long-arm statute. Future
Tech. Today, Inc. v. OSF Healthcare Sys., 218 F.3d 1247,
1249 (11th Cir. 2000). Second, the court examines whether
sufficient minimum contacts exist between the defendant and
the forum state so as to satisfy "traditional notions of
fair play and substantial justice" under the Fourteenth
Amendment's due process clause. Id. In patent
infringement actions, the law of the Federal Circuit governs
the due process inquiry. Breckenridge Pharm., Inc. v.
Metabolite Labs., Inc., 444 F.3d 1356, 1361 (Fed. Cir.
plaintiff bears the initial burden of establishing a
prima facie case of personal jurisdiction. Meier
ex rel. Meier v. Sun Int'l Hotels, Ltd., 288 F.3d
1264, 1268-69 (11th Cir. 2002). "A prima facie
case is established if the plaintiff presents enough evidence
to withstand a motion for directed verdict."
Id. at 1269 (internal quotation marks omitted). If
the defendant submits affidavits to the contrary, the burden
"shifts back to the plaintiff to produce evidence
supporting jurisdiction unless those affidavits contain only
conclusory assertions that the defendant is not subject to
jurisdiction." Id. If the evidence conflicts,
"the court must construe all reasonable inferences in
favor of the plaintiff." Id.
Florida long-arm statute
argue that personal jurisdiction exists under Section
48.193(1)(a)(2) of Florida's long-arm statute, which
applies if a cause of action arises from the commission of a
tortious act in Florida. Patent infringement constitutes a
tort within the meaning of the statute. Kemin Foods, L.
C. v. Omniactive Health Techs., Inc., 654 F.Supp.2d
1328, 1333 (M.D. Fla. 2009). And pursuant to 35 U.S.C. §
271(a), patent infringement occurs when a person
"without authority makes, uses, offers to sell, or sells
any patented invention, within the United States."
contend that JSF committed patent infringement by
"offering to sell" its RRFBs in Florida. (Dkt. 45
at 9) Plaintiffs point to invoices documenting that JSF paid
to advertise its RRFB system in a trade journal for the
International Municipal Signal Association ("IMS
A"), which has a circulation of over 10, 000, primarily
across the United States and Canada. (Dkt. 46-2 at 22-27;
Dkt. 46 at ¶ 6) Attached to the invoices is JSF's
full-page advertisement, which is titled "An RRFB
crosswalk system worth looking into." (Dkt. 46-2 at 27)
Under the title is a large picture of an RRFB with arrows
identifying its main features. The bottom of the page states:
"See more of our solar products online!" followed
by JSF's website and phone number. (Id.)
also submit a brochure from the IMSA's 2012 Education and
Technology Expo Annual Conference, which was held in Orlando,
Florida from July 28, 2012 to July 31, 2012. (Dkt. 46-1) On
page 24, the brochure lists "JSF Technologies" as
an exhibitor. (Dkt. 46-1 at 25) Plaintiffs provide a
photograph of JSF's booth at the conference, which
depicts two people standing next to an RRFB system. (Dkt.
46-6 at 2) According to Plaintiffs, the photo shows JSF
"proudly displaying and promoting for sale its RRFB
product." (Dkt. 46 at ¶ 8)
persuasively argues that the foregoing evidence does not
demonstrate an "offer to sell" within the meaning
of 35 U.S.C. § 271(a). The Federal Circuit instructs
that an offer to sell is interpreted in accordance with
traditional contract principles. Rotec Indus., Inc. v.
Mitsubishi Corp.,215 F.3d 1246, 1254-55 (Fed. Cir.
2000). Thus, an offer to sell requires the defendant's
"manifestation of willingness to enter into a bargain,
so made as to justify another person in understanding that
his assent to that bargain is invited and will conclude
it." Id. at 1257 (quoting Restatement (Second)
of Contracts § 24 (1979)). "[M]ere advertising and