Opinion
Case No. C-2-01-1021
July 26, 2002
ORDER
Plaintiffs American Electric Power Service Corporation, AEP Pro Serv, Inc., Ohio Power Company (collectively "the Ohio Plaintiffs"), and Environmental Elements Corporation ("EEC"), bring this action against defendants ECC Technologies Inc. ("ECC") and Hamon Research Cottrell ("Hamon"), for a declaratory judgment that ECC's U.S. Patent No. 6,077,491 ("`491 Patent") is invalid, unenforceable, and not infringed by the Plaintiffs.
This matter is before the Court on defendant Hamon's December 26, 2001 motion to dismiss (doc. 7), and defendant ECC's December 26, 2001 motion to dismiss or transfer (doc. 8). For the reasons that follow, the defendants' motion to dismiss is granted.
I. Facts
A. Parties and Procedural History
Plaintiff American Electric Power Service Corporation is a New York corporation with its principal place of business in Columbus, Ohio. Plaintiffs AEP Pro Serv and Ohio Power Company are Ohio corporations with their principal places of business in Columbus, Ohio. Plaintiff EEC is a Delaware corporation with its principal place of business in Maryland. Defendant ECC is a California corporation with its principal place of business in California. Defendant Hamon is a Delaware corporation with its principal place of business in New Jersey.
The Ohio Plaintiffs commenced this action on October 22, 2001 in the United States District Court for the Southern District of Ohio, naming EEC, ECC, and Hamon as defendants. On October 26, 2001, the Ohio Plaintiffs and EEC filed an amended complaint in the same court, reversing EEC from a defendant to a plaintiff. The amended complaint sought a declaration that the `491 Patent was invalid and unenforceable, that it was not infringed by the technology being utilized by Plaintiffs, and that Defendants were enjoined from charging infringement of the 491 Patent against Plaintiffs. (Am. Compl. 7-8.)
Defendant ECC argues that this Court does not have personal jurisdiction over it. Plaintiffs maintain that ECC exposed itself to personal jurisdiction in Ohio when its licensee, defendant Hamon, attempted to sell ECC's patented technology for generating ammonia from urea to AEP, which has its headquarters in Columbus, Ohio. Plaintiffs maintain also that ECC exposed itself to personal jurisdiction in Ohio when it and Hamon later threatened AEP with a suit for patent infringement if it pursued plans to use EEC's competing technology.
B. Factual Record
Defendant ECC's `491 Patent pertains to the generation of ammonia from urea. ECC refers to their process as "Urea to Ammonia," or "U2A". (Def. Hamon Mot. to Dismiss, Ex.1.) ECC has licensed this patent to defendant Hamon and nonparty Wahlco, Inc. of California. ( Id., Ex. B.)
At some point before June 28, 2000, ECC became aware that plaintiff EEC was selling ammonia-generation equipment which ECC considered to be infringing the 491 Patent. On June 28, 2000, ECC sent a cease and desist letter to the offices of EEC in Baltimore, Maryland. (Jan. 22, 2002 Decl. of Martin L. Mearhoff Ex. B.) This was followed by a threat to file suit against EEC on September 13, 2000 ( Id., Ex. C) and a further letter on October 13, 2000. ( Id., Ex. D.)
Meanwhile, on February 9, 2000, a representative of Hamon sent marketing materials to AEP in Columbus, Ohio; the accompanying letter noted AEP's need for emissions controls, and extolled the benefits of Hamon's expertise in this area. (Jan 18, 2002 Decl. of Jeffrey D. Clark ¶ 2, and Ex. A at 2.) The marketing materials noted that "Hamon Research-Cottrell, Inc. and Wahlco Air Systems . . . have entered into an exclusive license arrangement for ECC Technologies proprietary On-Site Urea-to-Ammonia (U2A) Generation System." ( Id., Ex. A at 9.)
On November 6, 2000, representatives of Hamon, including its vice-president, met with AEP in Columbus to attempt to sell a U2A system to AEP. (Jan. 22, 2002 Declaration of Robert Gellenbeck ¶ 4.) Hamon's vice-president referred to ECC and to its president during the sales presentation, and in a PowerPoint presentation Hamon described ECC as the "process developer". ( Id., Ex. B at 3.) On or about November 6, 2000, Hamon also submitted a budget proposal to AEP. (Jan. 22, 2002 Decl. of Peter Scheckermann ¶ 3.) This proposal referred to Hamon (and Wahlco) as "the exclusive licensees of ECC's [U2A] System." ( Id., Ex. A at 3.) AEP and Hamon held a further meeting in Columbus on December 4, 2000, to discuss the installation and licensing of a U2A system. (Gellenbeck Decl. ¶ 7.) On December 7, 2000, Hamon delivered an additional sales proposal to Columbus. ( Id., ¶ 8.)
On February 9, 2001, a meeting took place in Philadelphia, Pennsylvania between AEP, Hamon, and EEC. At this meeting, Hamon represented that Hamon and ECC's patent rights would have to be settled by litigation, which would include AEP, if a business solution to the controversy could not be reached. (Mearhoff Decl. ¶¶ 23-24.) On February 15, 2001, ECC, (represented by its president, Herbert Spencer), EEC, and Pro Serv held a meeting in Los Angeles, California. (Dec. 18, 2001 Decl. of Herbert W. Spencer ¶ 9.) At this meeting ECC discussed the possibility of ECC selling its position in the 491 Patent to AEP. (Mearhoff Decl. ¶ 25.) Pro Serv's representative, Martin Mearhoff, formed the impression at this meeting that Spencer "was a principal in the relationship with Hamon." (Mearhoff Decl. ¶ 25.) Spencer also indicated to Mearhoff that "litigation was a likely outcome of the conflict". ( Id., ¶ 26.)
At some point following the Los Angeles meeting, the parties arranged to meet a second time in Chicago. On August 21, 2001, Spencer contacted Mearhoff in Columbus to discuss arrangements for the upcoming meeting, as well as a confidentiality agreement to cover the proceedings. ( Id., ¶ 29.) This meeting took place on August 23, 2001, between AEP, ECC, EEC, and Hamon. At this meeting, ECC proposed to license the 491 Patent to AEP or EEC. (Spencer Decl. ¶ 10.) The parties reached no final agreement. On October 22, 2001, the Ohio Plaintiffs brought the instant action.
II. Defendant ECC Is An Essential Party For Purposes of Federal Rule 19(b)
It is well settled that a lawsuit should not proceed without an "indispensable" party as defined in Federal Rule of Civil Procedure 19(b), or else must be dismissed. See, e.g., Cooper v. Digital Processing Sys., Inc., 182 F.R.D. 242 (N.D. Ohio 1998), aff'd, 213 F.3d 1342 (Fed Cir. 1999). In the case at bar, the parties do not dispute that defendant ECC is an indispensable party. (Mem. of Ohio Plaintiffs in Opp'n. To Hamon's Mot. to Dismiss at 1; Hamon's Mot. to Dismiss at 9.) ECC, because it is the holder of the patent-in-suit, is an indispensable party; this principle has broad caselaw support. See, e.g., Suprex Corp. v. Lee Scientific et al., 660 F. Supp. 89, 93. (W.D. Penn. 1987); Mallinckrodt Medical, Inc. v. Sonus Pharmaceutical, Inc., 989 F. Supp. 265, 272 (D. D.C. 1998).
If indispensable defendant ECC is improperly joined under Federal Rule 19(b), then the present action should be dismissed. Defendants urge that this is so because this Court does not have personal jurisdiction over ECC. This is the real issue in controversy.
III. This Court Has No Personal Jurisdiction over Defendant ECC
A. Plaintiffs Have the Burden of Proving Jurisdiction
The party asserting that the Court has personal jurisdiction has the burden of proving it. Alder Terrace, Inc. v. U.S., 161 F.3d 1372, 1377 (Fed. Cir. 1998); McNutt v. General Motors Acceptance Corp. of Indiana, 298 U.S. 178, 189 (1936). Moreover, a plaintiff has the burden of establishing personal jurisdiction over a defendant once the defendant timely challenges jurisdiction. Giachetti v. Holmes, 14 Ohio App.3d 306, 471 N.E.2d 165 (1984). If the Court determines to decide the issue without an evidentiary hearing, however, the party need only make a prima facie showing; the trial court must view the allegations in the pleadings and the documentary evidence in a light most favorable to the plaintiff, and must resolve all competing inferences in favor of the plaintiff. Giachetti, 306, N.E.2d at 166. Consequently, Plaintiffs in the instant case have the burden of establishing personal jurisdiction over indispensable defendant ECC.
We apply the law of the Federal Circuit, rather than that of the regional circuit, in determining whether this court has personal jurisdiction over a defendant, because the jurisdictional issue is "intimately involved with the substance of the patent laws". Akro Corp. v. Luker, 45 F.3d 1541, 1543 (Fed. Cir. 1995). Whether personal jurisdiction exists over an out-of-state defendant depends upon two factors: whether the assertion of such jurisdiction comports with due process, and whether the defendant is amenable to service of process. Omni Capital Int'l, Ltd. v. Rudolf Wolff Co., Ltd., 484 U.S. 97, 104 (1987).
The most fundamental case on the subject of personal jurisdiction, International Shoe v. Washington, 326 U.S. 310 (1945), establishes the requirements of due process. The Federal Circuit had clarified International Shoe and its descendants into a test for reconciling the assertion of personal jurisdiction over an out-of-state defendant with constitutional due process. This test, found in Akro, involves three factors: whether the defendant "purposefully directed" its activities at the forum, whether the claim "arises out of or relates to" the defendant's actions with the forum, and whether the assertion of personal jurisdiction is "reasonable and fair". Akro, 1545. The court will apply the Akro test to determine whether asserting personal jurisdiction over defendant ECC would comply with due process.
B. Defendant ECC Did Not Purposefully Direct Its Activities Towards this Forum
The first element of the Akro test concerns whether defendant ECC "purposefully directed" its activities towards Ohio. The evidence does not support such a conclusion.
The Ohio Plaintiffs offer a plethora of different activities which ECC supposedly directed at Ohio. Several of these can be dismissed with little comment. Plaintiffs note an August 21, 2001 telephone call between ECC's president and AEP Service Corp.'s vice-president, Mr. Mearhoff, in Columbus, to discuss an upcoming meeting. (Pls.' Mem. at 23; Mearhoff Decl. ¶ 29.) However, settlement negotiations are not a basis for personal jurisdiction. Red Wing Shoe Co., Inc. v. Hockerson-Halberstadt, Inc., 148 F.3d 1355, 1361 (Fed. Cir. 1998).
The contention of the Ohio Plaintiffs that ECC's website constitutes an activity directed at Ohio is likewise dubious. (Pls' Mem. at 23 n. 15.) Defendant ECC's website, like those of the Ohio Plaintiffs, is accessible everywhere in the world. It is well settled that a passive website cannot subject a party to personal jurisdiction merely because it is accessible in any particular State. See, e.g., GTE New Media Services, Inc. v. Bellsouth Corp., 199 F.3d 1343, 1349-50 (D.C. Cir. 2000); Cybersell, Inc. v. Cybersell, Inc., 130 F.3d 414, 418 (9th Cir. 1997).
Plaintiffs also aver that defendant ECC, being a producer of pollution control technology, has identified Ohio as part of its target market. (Pls' Mem. at 5.) The reason for this is because the States east of the Mississippi River are especially affected by EPA air pollution regulations. Nevertheless, the interest of a corporation in a market which constitutes half the Union is not a specific activity "purposefully directed" at Ohio. See Asahi Metal Indus. Co. v. Superior Court, 480 U.S. 102, 111-12 (1987).
Plaintiffs' chief argument is that ECC's licensee Hamon directed its activities at Ohio. Citing Akro, Genetic Implant Sys., Inc. v. Core-Vent Corp., 123 F.3d 1455 (Fed. Cir., 1997), and LSI Industries, Inc. v. Hubbell Lighting, Inc., 232 F.3d 1369 (Fed. Cir., 2000), they contend that Hamon's attempts to do business in Ohio, coupled with ECC's relationship with Hamon, are sufficient to constitute activities which ECC "purposefully directed" at Ohio. (Pls'. Mem. at 23 et seq.)
The Federal Circuit, in Akro, grappled with the question of to what extent parties' contacts with licensees can be used to establish personal jurisdiction. Akro notes that "warning letters from and negotiations for a license with an out-of-state patentee cannot, without more, support personal jurisdiction in an action for a declaratory judgment . . ." Id., 1548. However, such letters combined with "an additional activity aimed at the forum state — namely, the patentee's exclusive licensing of one of the accused infringer's competitors within the forum state" are sufficient. Id., 1548.
Plaintiffs rely heavily upon Genetic Implant, a case which follows Akro closely. In Genetic Implant, a patent-holding corporation ("Core-Vent") sent cease-and-desist letters into the forum state of Washington. It also engaged in a program to develop a market for its product in Washington, including the establishment of teaching centers, as well as advertising. Core-Vent's "most significant" contacts with the forum state were that it had contracted with a licensee to sell products in Washington. Id., 1458. This licensee, the court held, was an in-state competitor for purposes of Akro. It thus considered Core-Vent, because it had sent cease-and-desist letters into Washington, and because it had hired an in-state licensee to sell its products in Washington, to be subject to personal jurisdiction. Plaintiffs urge that an analogous situation exists in the case at bar; that ECC similarly contracted with Hamon to sell its product in Ohio.
The Federal Circuit's decision in Red Wing, however, clarifies the Akro doctrine used in Genetic Implant (and relied upon by Plaintiffs). In Red Wing, the court drew a distinction between a patentee's contacts with its licensee and a licensee's contacts with a forum. Saying that "doing business with a company that does business in Minnesota is not the same as doing business in Minnesota", the court discouraged attributing a licensee's contacts to a patentee. Id., 1361. Red Wing holds that the necessary contacts to establish jurisdiction in Akro were not those between the licensee and the forum state in which it resided, which were then imputed to the patentee. They were, rather, the contacts between the patentee and the licensee, by virtue of the fact that the licensee was a resident of the forum state. Id., 1362. The in-state licensee, not the licensee's customers, could be thought of as the "contacted party".
Thus in the instant case, under Red Wing, the Akro standard would only apply if jurisdiction were being sought on the basis of ECC's own contacts with a licensee (or other party) resident in Ohio. It is noted that Hamon is licensed to do business in Ohio. (Dec. 22, 2002 Decl. of Marie W. Jones Ex. G.) It is also noted that the fact that Hamon is not an Ohio corporation is irrelevant. Genetic Implant, 1459. Nevertheless, Hamon's one unsuccessful attempt to enter Ohio and sell a U2A system does not qualify it as an in-state "competitor" for purposes of Akro. Under Red Wing, Hamon's contacts with the Ohio Plaintiffs have no bearing on the Akro standard. Only ECC's contacts with an Ohio resident would suffice; Hamon is not such an entity.
It should also be noted that discussion of Genetic Implant and Red Wing may be irrelevant. Akro dealt with cease-and-desist letters sent into a forum state, coupled with other contacts. In the instant case, defendant ECC sent no such letters into Ohio. The letters which ECC sent were directed to plaintiff EEC in Baltimore, Maryland; none were sent to Ohio. (Mearhoff Decl. Ex. B, C, D.) Akro holds that such letters sent to a party's legal counsel out of state qualify as if they were sent to the party's own state. Akro, 1546. EEC is not, however, counsel for any of the Ohio Plaintiffs.
Neither Akro nor its descendants speak as to whether the existence of cease-and-desist letters sent into a forum state is a necessary condition for the Akro standard. Nevertheless, it seems likely that even if ECC's contacts with Hamon were sufficiently related to Ohio to satisfy Akro and Red Wing, the fact that ECC sent no letters to Ohio ensures that jurisdictional requirements cannot be met under this standard.
Defendant ECC did not "purposefully direct" its activities towards Ohio.
C. This Claim Does Not Arise Out of or Relate To ECC's Actions With this Forum
The second element of the Akro test approximates to the concept of specific jurisdiction. ECC's actions with this forum, as established by the factual record, are quite limited. Indeed, it appears that the only direct contact between ECC and Ohio is the August, 21, 2001 telephone call between Mr. Spencer and Mr. Mearhoff, to discuss arrangements for the Chicago meeting (Mearhoff Decl. ¶ 29). It is difficult to imagine how the instant case "arises out of or relates to" this telephone call.
The Ohio Plaintiffs instead rely on a novel and complex theory: that the actions of defendant Hamon should be imputed to ECC for purposes of jurisdiction, because Hamon was acting as (or, more precisely, because Hamon was indistinguishable from) ECC's agent. Plaintiffs accomplish this syllogism through the doctrine of agency by estoppel. They argue that ECC acted in such a manner as to induce them to believe Hamon to be ECC's agent. Thus, they urge, ECC should be estopped from denying that an agency relationship existed. Since the activities of agents can sometimes be attributable to out-of-state defendants for purposes of jurisdiction, ECC would thereby be subject to personal jurisdiction in Ohio.
That the doctrine of agency by estoppel exists in Ohio cannot be doubted. What is unclear, however, is whether it is distinct from the concept of "apparent agency". Separate definitions of each appear at 1 Ohio Jury Instructions (1993) 187, Section 15.10:
"Estoppel and apparent authority are similar in that they are based on the underlying principle that a person shall be bound by his words or deeds. They are distinguished as follows: estoppel is essentially the principle that a person must compensate another for any change of position (loss) induced by reliance on what the person said or otherwise manifested, because it would be unjust to allow him to deny the truth of his words or manifestations; apparent authority is based on the objective theory of contracts, and arises when a person manifests to another that an agent or third person is authorized to act for him, irrespective of whether the person really intended to be bound, of whether the person told the same thing to the agent, and of whether the other person changed his position."
Under this definition "agency by estoppel" involves the principle of reliance to detriment.
The Ohio Supreme Court, however, has not been a model of clarity on this question, and time has slowly merged the two doctrines. In General Cartage Storage Co. v. Cox, 74 Ohio St. 284, 294, 78 N.E. 371, 372 (1906), the Court defined circumstances whereby "the principal is estopped . . . from denying the agent's authority." In Master Consol. Corp. v. BancOhio Nat'l Bank, 61 Ohio St.3d 570, 575, N.E.2d 817, 822 (1991), however, the Court quotes the above passage from General Cartage in order to define "the theory of apparent agency". In Shaffer v. Maier, 68 Ohio St.3d 416, 627 N.E.2d 988 (1994), the terms are simply used interchangeably, and a definition for "apparent agency" appears, involving reliance to detriment. This semantic puzzle makes little practical difference. The Ohio Plaintiffs have argued "agency by estoppel" as defined in Shaffer, and this court will not disagree. (Pls.' Mot. at 29.)
The Ohio Supreme Court in Shaffer held that "(t)o establish liability premised upon apparent agency, a plaintiff must show that (1) the defendant made representations leading the plaintiffs to reasonably believe that the wrongdoer was operating as an agent under the defendant's authority, and (2) the plantiff was thereby induced to rely upon the ostensible agency relationship to his detriment." Shaffer, 418, N.E.2d at 988. The roots of the doctrine of apparent agency in tort liability are evident in the Court's use of the term "wrongdoer", which would here correspond presumably to defendant Hamon.
The Ohio Plaintiffs offer as evidence only two possible sets of "representations" which might satisfy the first part of the Shaffer test. The first is the fact that ECC permitted Hamon to refer to it and to utilize its logo in Hamon's Ohio sales pitches. This, Plaintiffs argue, led them to reasonably believe that Hamon was ECC's agent.
Copies of Hamon's letters, marketing materials, and PowerPoint presentations have been introduced as evidence, chiefly as exhibits to the Clark and Gellenbeck Declarations. In none of these (and indeed Plaintiffs do not argue otherwise) does Hamon refer to itself as ECC's agent. In marketing materials Hamon mentions that it has an exclusive license for ECC's U2A system. (Clark Decl., Ex. A at 9). It refers to itself similarly in budget proposals (Scheckerman Decl., Ex. A at 3). In a November 6, 2000 sales presentations, Hamon's vice-president again averred that they were ECC's licensee, and displayed a PowerPoint presentation referring to ECC as the "process developer". (Gellenbeck Decl., Ex. B at 3). None of these references, even construed most strongly in the plaintiffs' favor, constitutes representations which would lead Plaintiffs to reasonably believe that Hamon was ECC's agent, rather than merely their licensee.
Plaintiffs' second representation is that the president of ECC "made it clear that he was a principal in the relationship with Hamon" during the February 15, 2001 meeting in Los Angeles. (Mearhoff Decl. ¶ 25). Mr. Mearhoff does not relate precisely how Mr. Spencer made this relationship clear, noting only that he "expressed his authority to and interest in selling" ECC's U2A patent, and that "ECC had retained the rights to protect ECC's commercial interests in the U2A technology." ( Id.)
Even with this evidence construed most strongly in Plaintiffs' favor, Mr. Mearhoff's conclusion simply is not credible. He affirms that he is "Vice President of Advanced Technologies and Renewable Energy" for American Electric Power Service Corporation, and that one of his duties is to "evaluate new technology". (Mearhoff Decl. ¶ 1). A reasonable person in such a position, that is, a sophisticated corporate officer, would be familiar with the concepts involved in patent licensing and agency relationships. Such a person would not be led to reasonably believe, based on Mr. Spencer's claims that ECC owned the U2A patent and had licensees, that one of these licensees was operating as an agent under ECC's authority.
Defendant ECC thus made no representations which would lead Plaintiffs to reasonably believe that Hamon was operating as an agent under ECC's authority.
The Shaffer test also requires that the Ohio Plaintiffs were induced to rely on the ostensible agency relationship to their detriment. Plaintiffs have made scant mention of what this reliance to detriment might be. No such allegations appear in the amended complaint. In their Memorandum in Opposition to Defendants' Motion to Dismiss, Plaintiffs venture that "in reliance on those representations, among other things, the AEP Companies became plaintiffs in this lawsuit". ( Id., 31)
What "other things" there might be remain mysterious. The Ohio Plaintiffs did not conclude any business with Hamon in reliance on a belief that Hamon was ECC's agent. Their only action which relied upon this belief, as best can be determined, was the filing of the case at bar; the detriment which they have suffered, if one can be said to exist, is the dismissal of their action for lack of jurisdiction. Plaintiffs are in effect attempting to use their failure to establish personal jurisdiction in order to establish personal jurisdiction. This defective syllogism does not stand up to scrutiny. The necessary elements of apparent agency do not exist in this case.
Defendant Hamon is not the agent of defendant ECC.
D. This Court Has No Jurisdiction over ECC Under Ohio's Long-Arm Statute
An additional inquiry as to whether defendant ECC is amenable to service of process in Ohio is justified, because the reach of Ohio's "long-arm" statute (O.R.C. § 2307.382) is not coextensive with the limits of constitutional due process. Goldstein v. Christiansen, 70 Ohio St.3d 232, 238 n. 1, 638 N.E.2d 541, 545 n. 1 (1994). The Ohio Plaintiffs rely upon O.R.C. §§ 2307.382(A)(1) and (A)(6) in arguing that ECC is amenable to service (Pls' Mem. at 20, 36). These statutory sections declare:
(A) A court may exercise personal jurisdiction over a person who acts directly or by an agent, as to a cause of action arising from the person's:
(1) Transacting any business in this state;
. . .
(6) Causing tortious injury in this state to any person by an act outside this state committed with the purpose of injuring persons, when he might reasonably have expected that some person would be injured thereby in this state;
That defendant Hamon was not ECC's agent is determined above. The question is thus whether ECC themselves have a) transacted business in Ohio orb) caused tortious injury in Ohio by its actions outside Ohio for the purpose of injuring persons, when ECC might reasonably have expected that some person would be injured.
Ohio law defines "transacted business" quite broadly. Kentucky Oats Mall Co. v. Mitchell's Formal Wear, Inc., 53 Ohio St.3d 73, 75, 559 N.E.2d 477, 480 (1990). Nevertheless, the factual record does not demonstrate that ECC has conducted any business in Ohio at all. ECC is not licensed to do business in the state of Ohio. (Spencer Decl. ¶¶ 4, 5.) ECC undertook no sales presentations to AEP in Ohio. (Gellenbeck Decl. ¶¶ 4, 7, 8.) The Ohio Plaintiffs, for their part, offer little argument that ECC "transacted business" in Ohio other than through its supposed "agent", Hamon. (Pls.' Mem. at 37, 38.) O.R.C. § 2307.382(A)(1) is thus not applicable here.
The question of whether defendant ECC falls under section (A)(6) is altogether more interesting. Here, however, the Federal Circuit has established the law, in the recent case of Hildebrand v. Steck Manufacturing Co., Inc., 279 F.3d 1351 (Fed. Cir. 2002). In Hildebrand, a Colorado inventory sent several cease and desist letters to Ohio manufacturers whom the inventor claimed were infringing upon his patent. One of these letters was accompanied by a sample set of tools and an offer to license his patent. The inventory also made a number of phone calls along the same lines. Word of these attempts to enforce his patent resulted in a cancelled sale, and the aggrieved manufacturer filed suit against the Colorado inventor, claiming that jurisdiction existed under Ohio's long-arm statute. Plaintiff Steck Manufacturing claimed that defendant Hildebrand had caused tortious injury by his actions outside Ohio.
The Court held that "[f]airness and reasonableness demand that a patentee be free to inform a party who happens to be located in a particular forum of suspected infringement without the risk of being subjected to a law suit in that forum." Id., 1356. Although the Federal Circuit's decision in Hildebrand dealt directly with O.R.C. § 2307.382(A)(4), its applicability to section (A)(6) is obvious. Giving notice of potential infringement, as defendant ECC did by sending letters from California to EEC in Maryland, and by implying to AEP at a meeting in California that litigation was likely, is not "tortious injury" for purposes of O.R.C. § 2302.382(A)(6). Such notice is proper behavior for a patent-holder. Even if ECC's behavior were tortious injury, however, it is not clear why, and Plaintiffs have made no argument as to why, it should be considered to have been committed for the purpose of injuring any plaintiff.
Defendant ECC is not amenable to service of process under Ohio's long-arm statute.
IV. Conclusion
The Court finds that the elements of the Akro standard for personal jurisdiction are not met for defendant ECC Technologies, for the reasons set forth above; jurisdiction thus cannot be obtained over this defendant. Because ECC is an indispensable party, and because they are improperly joined under Federal Rule 19(b), the present action should be dismissed.
For these reasons, Hamon's December 26, 2001 motion to dismiss (doc. 7) pursuant to Federal Rules 12(b)(7) and 19(b) is GRANTED, and defendant ECC's December 26, 2001 motion to dismiss (doc. 8) is GRANTED. This action is DISMISSED WITHOUT PREJUDICE.