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District Court Determines No Personal Jurisdiction Exists Under Rules (4)(k)(1) and (4)(k)(2) of the Federal Rules of Civil Procedure Where Plaintiff Could Show Only a Single Infringing Unit Was Sold in the State and Defendant’s Website and Other Activities Were Not Directed at Residents of the State

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Stan Gibson and Julia Consoli-Tiensvold

In Miller Industries Towing Equipment Inc., v. NRC Industries, Plaintiff Miller Industries Towing Equipment Inc. (“Plaintiff” or “Miller”) alleged infringement of a patent by NRC Industries (“Defendant” or “NRC”). The patents in question involve towing recovery vehicles designs and uses. Defendant moved to dismiss under Federal Rule of Civil Procedure (“FRCP”) 12(b)(2), alleging that the Court lacked personal jurisdiction over NRC. Defendant also moved to dismiss the claims under FRCP 12(b)(6), but this was ultimately determined to be moot in light of the Court’s determination.

Plaintiff argued that the district court could exercise personal jurisdiction over NRC as it has exercised sufficient “minimum contacts” with the state of Tennessee under Int’l Shoe Co. v. Washington, 326 U.S. 310, 316 (1945), because NRC advertises in two magazines that have Tennessee subscribers, posts training videos to nationally accessible third-party websites (such as YouTube), maintains a website accessible by Tennessee residents, participates in trade shows where NRC markets its infringing products to Tennessee residents, and because NRC has sold the infringing product to at least one Tennessee resident.

The legal standard for determining whether a court may exercise personal jurisdiction over a defendant is based on FRCP 4(k)(1) and 4(k)(2). Touchcom, Inc. v. Bereskin & Parr, 574 F.3d 1403, 1410 (Fed. Cir. 2009). Continue reading

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District Court Permits Ex Parte Communication with Former Employee and Co-Inventor of Plaintiff But Orders Defendants to Turn Over Certain Email Communications

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Stan Gibson and Julia Consoli-Tiensvold

In ICM Controls Corp. v. Honeywell International, Inc., Plaintiffs ICM Control Corp. (“Plaintiffs” or “ICM”) filed a letter motion objecting to ex parte communications between counsel for Defendants Honeywell International, Inc. (“Defendants”) and a former employee and co-inventor of Plaintiffs, due to the possibility that the former co-inventor may have disclosed privileged or confidential information obtained as a result of his employment.

The former employee, Andrew Nguyen, was the co-inventor on the patent at issue in this case alongside Andrew Kadah, the current President of ICM. Mr. Kadah, during Mr. Nguyen’s employment, would have regular communications with co-inventors, including Mr. Nguyen, for the purpose of providing information to legal counsel in order to receive legal advice. Mr. Nguyen left his employment at ICM in 1997, prior to ICM applying for the patent at issue.

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