Hiring a Massachusetts lawyer to file a federal lawsuit in another state doesn’t mean the party can be sued in Massachusetts, a Boston federal judge has ruled.
U.S. District Judge Dennis Saylor of the District of Massachusetts on Tuesday dismissed TomTom v. Norman IP Holdings on the ground that the District of Massachusetts has no jurisdiction over Texas patent holding company Norman IP.
Adopting U.S. Magistrate Judge Judith Dein’s July 26 recommendation, Saylor rejected TomTom’s argument that by retaining Massachusetts-based counsel to represent it in patent litigation in a Texas federal court, Norman IP opened itself to a lawsuit in the Bay State.
“The cases TomTom cites in its objection to the report and recommendation stand only for the proposition that a patentee may establish minimum contacts in a state when it hires counsel for the enforcement or defense of the patent in that state’s courts,” Saylor wrote. “Here, all of Norman’s enforcement actions have been commenced elsewhere. Those actions do not constitute sufficient minimum contacts with Massachusetts to support the exercise of personal jurisdiction.”
Netherlands-based GPS maker TomTom, which does business in Concord, Mass., filed suit in February in Massachusetts, seeking a declaration that it has not infringed three of Norman IP’s microprocessor-related patents.
The lawsuit was in reaction to Norman IP’s September 2011 Eastern District of Texas case against TomTom and numerous other companies that make, sell or distribute allegedly infringing products, Norman IP Holdings v. Lexmark International. Last month, the Texas court separated the TomTom matter.
After the magistrate recommended dismissal of the Massachusetts case, TomTom shot back with an August memo objecting to her report. The company argued that Norman IP and Saxon Innovations LLC, which have the same mail drop in Tyler, Texas, used Boston lawyers from Philadelphia’s Pepper Hamilton “to file or defend at least seven lawsuits involving one or more of the patents-in-suit” between 2007 and 2010.
“With no employees or operations in Tyler, Norman/Saxon’s Boston lawyers acted as the company’s agents in undertaking the company’s sole business purposes of initiating patent litigations and negotiating patent licensing agreements,” TomTom wrote.
Andrew DiNovo, a partner at DiNovo Price Ellwanger & Hardy in Austin, Texas, and Norman IP’s lead lawyer in the Massachusetts case, declined to comment. The company’s lawyers at Manchester, N.H.-headquartered Sheehan Phinney Bass & Green also declined to comment. The company did not respond to a request for comment.
TomTom and its lawyers at Philadelphia’s Duane Morris and Washington-based Wiley Rein also did not respond.
TomTom advanced a novel theory and cited cases that weren’t on point, said Joshua Slavitt, a patent partner at Philadelphia’s Pepper Hamilton who wasn’t involved in the Norman IP litigation. “The mere hiring of lawyers in that forum doesn’t subject the client to jurisdiction in the forum,” Slavitt said.
Sheri Qualters is a reporter for The National Law Journal, a Legal affiliate based in New York.