United States District Court, S.D. Indiana, New Albany Division
ENTRY ON DEFENDANTS' MOTION TO DISMISS FOR LACK
OF PERSONAL JURISDICTION, FAILURE TO STATE A CLAIM UPON WHICH
RELIEF CAN BE GRANTED, IMPROPER VENUE OR, IN THE ALTERNATIVE,
MOTION FOR MORE DEFINITE STATEMENT
RICHARD L. YOUNG, JUDGE
Ultra Athlete LLC, owns patents that cover the functional and
design aspects of an ankle brace product. Plaintiff alleges
the Defendants, Jalmar Araujo and JB Sports, LLC d/b/a
Flexibrace, sell the “Flexibrace Ankle Brace Hinged
Support Guard” which infringes its patents and trade
dress. Defendants move to dismiss Plaintiff's Complaint
on three grounds: lack of personal jurisdiction, failure to
state a claim, and improper venue. In the alternative, they
move for a more definite statement. For the reasons explained
below, Defendants' motion is GRANTED in
part and DENIED in
Sports' principal place of business is in Everett,
Massachusetts. (Filing No. 33-2, Amended Declaration of
Jalmar Araujo (“Am. Araujo Decl.”) ¶ 10).
Mr. Araujo, the owner and principal officer of JB Sports,
testified that between May 2016 and May 2018, JB Sports sold
infringing ankle brace products to Indiana residents. (Filing
No. 47-1, Deposition of Jalmar Araujo at 53). Defendants
allegedly sold these products on eBay, Amazon.com, and other
outlets. (Filing No. 25, First Amended Complaint (“Am.
Compl.”) ¶ 10; Filing No. 25-5, Araujo-Flexibrace
eBay Seller's Page).
a resident of Indiana, brought suit against Defendants
because the Defendants' Flexibrace product allegedly
infringes Plaintiff's patents and trade dress rights, and
amounts to unfair competition. (Am. Compl. ¶¶ 3, 8,
Motion to Dismiss for Lack of Personal Jurisdiction
“[a] defendant moves to dismiss the complaint under
Federal Rule of Civil Procedure 12(b)(2) for lack of personal
jurisdiction, the plaintiff bears the burden of demonstrating
the existence of jurisdiction.” Purdue Research
Found. v. Sanofi-Synthelabo, S.A., 338 F.3d 773, 782
(7th Cir. 2003). As such, a plaintiff need only make a prima
facie showing of jurisdictional facts. See Felland v.
Clifton, 682 F.3d 655, 672 (7th Cir. 2012). “In
evaluating whether the prima facie standard has been
satisfied, the plaintiff ‘is entitled to the resolution
in its favor of all disputes concerning relevant facts
presented in the record.'” Purdue
Research, 338 F.3d at 782 (quoting Nelson by Carson
v. Park Indus., Inc., 717 F.2d 1120, 1123 (7th Cir.
Plaintiff brought claims under the Lanham Act, which does not
authorize nationwide service of process, a federal district
court has personal jurisdiction over a non- resident
defendant if a court of the state in which it sits would have
such jurisdiction. Id. at 779. In Indiana, personal
jurisdiction depends on whether the requirements of the
state's long-arm statute are met and whether federal due
process requirements are satisfied. Id. Indiana
Trial Rule 4.4(A) serves as Indiana's long-arm statute.
Because Indiana's long-arm statute expands personal
jurisdiction to the full extent permitted by the Due Process
Clause, LinkAmerica Corp. v. Albert, 857 N.E.2d 961,
966-67 (Ind. 2006), the sole inquiry before the court is
whether exercising personal jurisdiction over the Defendants
would offend due process.
jurisdiction over a nonresident defendant meets the standard
of due process when the defendant has established minimum
contacts within the state “such that the maintenance of
the suit does not offend ‘traditional notions of fair
play and substantial justice.'” Tamburo v.
Dworkin, 601 F.3d 693, 700-01 (7th Cir. 2010) (quoting
Int'l Shoe Co. v. Washington, 326 U.S. 310, 316
(1945)). Personal jurisdiction may be either general or
specific. The parties focus their arguments on specific,
rather than general, jurisdiction. Specific jurisdiction is
appropriate when: (1) “the defendant has purposefully
directed its activities at the forum state or purposefully
availed himself of the privilege of conducting business in
that state”; (2) “the alleged injury arises out
of the defendant's forum-related activities”; and
(3) “[t]he exercise of jurisdiction  comport[s] with
traditional notions of fair play and substantial
justice.” N. Grain Mktg., LLC v. Greving, 743
F.3d 487, 492 (7th Cir. 2014) (citing Tamburo, 601
F.2d at 702).
argue the court does not have specific jurisdiction over them
because they have not purposely directed their activities at
Indiana, Plaintiff's alleged injuries did not arise from
Defendants' Indiana-related activities, and the exercise
of jurisdiction over them would not comport with traditional
notions of fair play and substantial justice.
establish a defendant's conduct was purposefully directed
at the forum state, a plaintiff must show that “the
defendant's suit-related conduct . . . create[s] a
substantial connection with the forum State.”
Walden v. Fiore, 134 S.Ct. 1115, 1121 (2014). The
Walden Court emphasized that “the plaintiff
cannot be the only link between the defendant and the
forum”; “it is the defendant's conduct that
must form the necessary connection with the forum
State.” Id. at 1122 (citing Burger King v.
Rudzewicz, 471 U.S. 462, 478 (1985)).
Seventh Circuit's decision in Illinois v. Hemi Group
LLC is instructive. 622 F.3d 754 (7th Cir. 2010). Hemi,
based out of New Mexico, sold cigarettes over the internet to
49 states, specifically excluding New York. Id. at
755-56. The only specific sales to an Illinois resident were
instigated by an Illinois Department of Revenue agent, who
purchased more than 300 packs of cigarettes from
Hemi-operated websites in 2005 and 2007. Id. at 755.
Despite the fact that Hemi was “not registered to do
business in Illinois, [did] not have any offices or employees
in Illinois, [did] not bank in Illinois, . . . [had] not
advertised in print media in Illinois, ” and did not
“single out Illinois residents on any of its websites,
” the Seventh Circuit affirmed the district court's
exercise of specific jurisdiction over Hemi. Id. at
756-58. The Seventh Circuit based its decision on how Hemi
conducted its internet-based business.
Hemi created several commercial, interactive websites through
which customers could purchase cigarettes from Hemi. Hemi
held itself out as open to do business with every state
(including Illinois) except New York. After the customers
made their purchases online, Hemi shipped the cigarettes to
their various destinations. It is Hemi reaching out to
residents of Illinois, and not the residents reaching back,
that creates the sufficient minimum contacts with Illinois
that justify exercising personal jurisdiction over Hemi in
Id. at 758. Thus, where an internet company holds
itself out as open to do business with a forum state and
actually does sell products to residents of the forum,
specific jurisdiction is proper. Payton v. Kale Realty,
LLC, Case No. 13 C 8002, 2014 U.S. Dist. LEXIS 118590,
at *8 (N.D. Ill. Aug. 26, 2014) (citation omitted).
the defendant in Hemi Group, Factory Direct operates
internet retail stores for the promotion and sale of its
Flexibrace product on interactive websites like Amazon.com
and eBay.com. Defendants hold themselves out as open to do
business with every state and directly ship the items sold
from various internet websites to customers in Indiana.
Defendants were therefore “ready and willing” to
do business with [Indiana] residents, ...