UNITED STATES DISTRICT COURT

DISTRICT OF NEW JERSEY

 

EARLY LEARNING RESOURCES, LLC, : 

D/B/A EARLY CHILDHOOD RESOURCES, :

: Civil No. 10-6335(NLH)(JS)

Plaintiff, :

:

 v. : OPINION

:

SEBEL FURNITURE LIMITED, : 

:

Defendant. :

 

APPEARANCES:

NORMAN ELLIOT LEHRER

1205 NORTH KINGS HIGHWAY

CHERRY HILL, NJ 08034 

Attorney for plaintiff

MICHAEL DAVID RITIGSTEIN

200 HADDON AVE.

HADDONFIELD, NJ 08033

Attorney for defendant

HILLMAN, District Judge

Before the Court is a motion by defendant Sebel Furniture

Limited (“Sebel”) to dismiss Early Learning Resources, LLC, D/B/A

Early Childhood Resources’(“ECR”) complaint pursuant to

Fed.R.Civ.P. 12(b)(2) for lack of personal jurisdiction, or

alternatively for a failure to state a claim for which relief may

be granted, pursuant to Fed.R.Civ.P. 12(b)(6). ECR seeks a

declaratory judgment that it is not infringing upon Sebel’s 

patent. For the reasons expressed below, Sebel’s motion to

dismiss will be granted.

Case 1:10-cv-06335-NLH-JS Document 18 Filed 09/30/11 Page 1 of 21 PageID: 309
I. BACKGROUND

Plaintiff ECR is a limited liability company with its

principal place of business in the State of New Jersey. ECR

sells products, such as furniture and chairs, to schools and

related institutions. Defendant Sebel is an Australian company,

headquartered in Padstow, New South Wales, Australia. Sebel was

formed in 1947 and manufactures chairs, desks, tables, and other

furniture. At issue in this case is a patent for Sebel’s POSURA

model, which model is sold as a school chair. The patent is

registered under U.S. Patent No. 5,860,697 (“the ‘697 Patent”). 

Sebel alleges that it has not sold any school chairs in the

United States in at least the past three years. Moreover, Sebel

contends that it has never sold its school chair in the District

of New Jersey.

In or around November 2009, Sebel sent a letter to ECR in

New Jersey, claiming that ECR sold a chair in the United States

that was a copy of Sebel’s POSURA chair, and thus, ECR was

infringing upon Sebel’s ‘697 patent. This letter was basically a

“cease-and-desist letter” that stated that Sebel would pursue

legal action against ECR if ECR continued to infringe the patent. 

In or around December 2009, Sebel’s attorney responded to an

email from a representative of ECR in California supplying patent

details for Sebel’s ‘697 patent. In December 2010, Sebel wrote

another email to the ECR representative in California advising

2

Case 1:10-cv-06335-NLH-JS Document 18 Filed 09/30/11 Page 2 of 21 PageID: 310
ECR that it planned to seek legal action for ECR’s alleged

infringement of Sebel’s ‘697 patent. Sebel, however, has not

taken any formal legal action against ECR for the alleged patent

infringement. 

In addition to the above contacts, plaintiff also alleges

that: Sebel maintains a website that is in part directed to the

United States; Sebel’s website lists two U.S. distributors, one

in Illinois and one in Michigan; Sebel has a “business

relationship” with a dealer in Wisconsin; Sebel publishes two

catalogs on its website that are directed toward the U.S., i.e.,

USA Educational Products and USA Institutional Products; Sebel

has seven buyers in the U.S. and has made 91 shipments to the

U.S. from July 1, 2007 to January 20, 2011; Sebel contracted for

and was an exhibitor at two school equipment trade shows in

Arizona in 2009 and 2010; Sebel demonstrated a school chair (the

POSTURA chair which is the subject of this litigation) at the

trade shows and offered them for sale in the U.S.; from 1989 to

2010, Sebel applied for and obtained 11 different U.S. design

patents, three of which are still active; from 1988 to 2005,

Sebel applied for and obtained at least six U.S. utility patents,

one of which is the subject of the present litigation; Sebel

maintained its U.S. patents by paying taxes; from 1989 to 2010,

Sebel has applied to the U.S. Patent and Trademark Office to

register 13 different trademarks; Sebel retained attorneys in

3

Case 1:10-cv-06335-NLH-JS Document 18 Filed 09/30/11 Page 3 of 21 PageID: 311
California, Minnesota, Illinois and Pennsylvania in connection

with the filing and prosecution of its design and utility patent

applications; and Sebel retained attorneys in New York and

Washington D.C. in connection with the filing and prosecution of

its U.S. trademarks.

II. JURISDICTION

This Court has subject matter jurisdiction over this

declaratory judgment action pursuant to 28 U.S.C. § 1331 as

plaintiff’s claims arise under the Federal Declaratory Judgment

Act, 28 U.S.C. § 2201 and under the patent laws of the United

States, 28 U.S.C. §1338(a). Although defendant has challenged

this Court’s personal jurisdiction, it is well established that

the trial court has inherent power and jurisdiction to decide

whether it has jurisdiction. See In re Automotive Refinishing

Paint Antitrust Litigation, 358 F.3d 288, 303 (3d Cir. 2004). 

III. DISCUSSION

A. Standard of Review

The defendant has moved to dismiss plaintiff’s complaint

pursuant to Rule 12(b)(2) and Rule 12(b)(6). Since a lack of

personal jurisdiction over the defendant strips this Court of its

authority to preside in the case, we address the personal

jurisdiction challenge first. After a motion to dismiss is filed

pursuant to Fed.R.Civ.P. 12(b)(2), the burden shifts to the

plaintiff to provide sufficient facts to establish jurisdiction. 

4

Case 1:10-cv-06335-NLH-JS Document 18 Filed 09/30/11 Page 4 of 21 PageID: 312
See Zippo Mfg. Co. v. Zippo Dot Com, Inc., 952 F.Supp. 1119, 1121

(W.D.Pa. 1997). The plaintiff must “... sustain its burden of

proof in establishing jurisdictional facts through sworn

affidavits or other competent evidence...” and cannot rely “on

the bare pleadings alone in order to withstand a defendant’s Rule

12(b)(2) motion to dismiss for lack of in personam jurisdiction.”

See Weber v. Jolly Hotels, 977 F.Supp. 327, 331 (D.N.J. 1997)

(citing Time Share Vacation Club v. Atlantic Resorts, Ltd., 735

F.2d 61, 67 n. 9 (3d Cir. 1984)). A Court must look beyond the

pleadings in deciding a Rule 12(b)(2) motion. Id. 

Because the parties have not conducted discovery, ECR only

needs to make a prima facie showing that Sebel is subject to

personal jurisdiction. See Autogenomics, Inc. v. Oxford Gene

Technology Ltd., 566 F.3d 1012, 1017 (C.A.Fed. 2009); Elecs. for

Imaging, Inc. v. Coyle, 340 F.3d 1344, 1349 (Fed.Cir. 2003) (“In

the procedural posture of a motion to dismiss, a district court

must accept the uncontroverted allegations in the plaintiff's

complaint as true and resolve any factual conflicts in the

affidavits in the plaintiff’s favor.”). The pleadings and

affidavits are to be viewed in the light most favorable to ECR. 

See Avocent Huntsville Corp. v. Aten Int’l Co., 552 F.3d 1324,

1328-29.

B. Personal Jurisdiction

This case was filed in the District of New Jersey and,

5

Case 1:10-cv-06335-NLH-JS Document 18 Filed 09/30/11 Page 5 of 21 PageID: 313
therefore, this Court must decide whether it has jurisdiction

over the defendant in this forum. A defendant is subject to the

jurisdiction of a United States district court if the defendant

“is subject to the jurisdiction of a court of general

jurisdiction in the state where the district court is located.” 

Fed.R.Civ.P. 4(k)(1)(A). The district court’s exercise of

jurisdiction over an out-of-state defendant must comport with the

forum state’s long-arm statute and due process. See Avocent

Huntsville Corp. v. Aten Int’l Co., 552 F.3d 1324, 1329 (Fed.Cir.

2008). “Federal courts situated in New Jersey may exercise

personal jurisdiction to the extent permitted under New Jersey

state law.” Colvin v. Van Wormer Resorts, Inc., 417 Fed.Appx.

183, 186 (3d Cir. 2011)(citing Miller Yacht Sales, Inc. v. Smith,

384 F.3d 93, 96 (3d Cir. 2004)). “New Jersey’s analog to a

long-arm statute, N.J. Court Rule 4:4–4, ‘provides for

jurisdiction coextensive with the due process requirements of the

United States Constitution.’” Id. Therefore, “‘parties who have

constitutionally sufficient minimum contacts with New Jersey are

subject to suit there’ in both Federal and state court.” Id. 

Thus, the jurisdictional issue here turns on whether this Court’s

exercise of jurisdiction would be consistent with the

requirements of due process. 

“[D]ue process requires only that in order to subject a

defendant to a judgment [by a court],” the defendant must have

6

Case 1:10-cv-06335-NLH-JS Document 18 Filed 09/30/11 Page 6 of 21 PageID: 314
deliberately established “certain minimum contacts” with the

forum so that the “exercise of jurisdiction does not offend

traditional notions of fair play and substantial justice.” Int’l

Shoe Co. v. Washington, 326 U.S. 310, 316 (1945). To establish

minimum contacts, the defendant must have purposefully availed

itself of the privilege of conducting activities within the forum

state, thus invoking the benefits and protections of its laws. 

Hanson v. Denckla, 357 U.S. 235, 253 (1958). “When a corporation

purposefully avails itself of the privilege of conducting

activities within the forum state, it has clear notice that it is

subject to the suit there... .” World-Wide Volkswagen Corp. v.

Woodson, 444 U.S. 286, 297 (1980) (internal quotation marks

omitted). Moreover, whether there is personal jurisdiction

depends upon “an assessment of the quality and nature of a

defendant’s activity." Max Daetwyler Corp. v. R. Meyer, 762 F.2d

290, 298 (3d Cir. 1985). The defendant must know or reasonably

anticipate that its activities in the forum would render it

foreseeable that it may be "haled into court" there. World-Wide

Volkswagen, 444 U.S. at 297. 

Since district courts apply Federal Circuit law when dealing

with jurisdictional issues in patent cases, Avoncent, 552 F.3d at

1328, Federal Circuit law is examined to determine whether

personal jurisdiction can be exercised over the “out-of-state

infringer.” Synthes (U.S.A.) v. GMReis, 563 F.3d 1285, 1292

7

Case 1:10-cv-06335-NLH-JS Document 18 Filed 09/30/11 Page 7 of 21 PageID: 315
(Fed. Cir. 2009); Silent Drive, Inc. v. Strong Indus., Inc., 326

F.3d 1194 (Fed. Cir. 2003). Additionally, Federal Circuit law

applies to personal jurisdiction questions when a foreign

patentee is a declaratory judgment defendant. Hildebrand, 279

F.3d at 1354; Beverly Hills Fan Co. v. Royal Sovereign Corp., 21

F.3d 1558, 1564 (Fed.Cir.), cert. dismissed, 512 U.S. 1273, 115

S.Ct. 18, 129 L.Ed.2d 917 (1994). There are two types of

jurisdiction: general and specific. We apply both to determine

whether this Court may exercise jurisdiction over the defendant.

1. General Jurisdiction in the District of New Jersey

General jurisdiction is invoked when the defendant has

“continuous and systematic” contacts with the forum state.

Helicopteros Nacionales de Colombia, S.A. v. Hall, 466 U.S. 408,

104 S.Ct. 1868, 80 L.Ed.2d 404 (1984). General jurisdiction

requires "a very high threshold of business activity." Compagnie

des Bauxites de Guinea v. Ins. Co. of N. America 651 F.2d 877,

891 n. 2 (3d Cir. 1981) (finding that a "daily presence" in the

forum and activities such as weekly advertising, regular

solicitation of business, substantial product sales, and the

maintenance of a telephone number in the forum meet the

threshold).

With respect to patent infringement litigation, general

jurisdiction exists when the defendant’s “continuous and

systematic” contacts with the forum state will “confer []

8

Case 1:10-cv-06335-NLH-JS Document 18 Filed 09/30/11 Page 8 of 21 PageID: 316
[general] personal jurisdiction even when the cause of action has

no relationship with those contacts.” Avoncent 552 F.3d at 1331-

32 (quoting Silent Drive, 326 F.3d at 1200). Although the

Federal Circuit does not have a specific test to analyze whether

there is general jurisdiction over a defendant, Synthes, 563 F.3d

at 1292, the level of contacts required for exercising general

jurisdiction is substantially higher than for specific

jurisdiction. Provident Nat’l Bank v. California Federal Sav. &

Loan Ass’n, 819 F.2d 434, 437. Accordingly, “an assertion of

general jurisdiction [will be] consistent with due process only

when the plaintiff has satisfied the ‘rigorous’ burden of

establishing that the defendant’s contacts are continuous and

substantial.” Covenant Bank for Savings v. Cohen, 806 F. Supp.

52, 56 (D.N.J. 1992) (citing Giangola v. Walt Disney World Co.,

753 F. Supp. 148, 154 (D.N.J. 1992)).

This Court does not have general jurisdiction over Sebel. 

There are no “continuous and systematic” contacts with New

Jersey. The only contact with New Jersey is a “cease-and-desist

letter” sent in November 2009, in which Sebel claimed that ECR

sold a chair in the United States that was a copy of Sebel’s

POSURA chair, and thus was infringing upon Sebel’s ‘697 patent. 

Infringement letters are the typical communication for a

defendant patentee to allege injury. See Red Wing Shoe Co., Inc.

v. Hockerson-Halberstadt, Inc., 148 F.3d 1355, 1360 (C.A.Fed.

9

Case 1:10-cv-06335-NLH-JS Document 18 Filed 09/30/11 Page 9 of 21 PageID: 317
1998). The Federal Circuit has held that such letters sent to

the alleged infringer by themselves do not suffice to create

personal jurisdiction. Id. A patentee does not subject itself

to personal jurisdiction in this way because “principles of fair

play and substantial justice afford a patentee sufficient

latitude to inform others of its patent rights without subjecting

itself to personal jurisdiction in a foreign forum.” Id. 

Sebel’s single letter regarding its patent claim does not come

close to the required “continuous and systematic” contacts. 

Therefore, this Court cannot exercise jurisdiction over Sebel

based on principles of general jurisdiction.

2. Specific Jurisdiction in the District of New Jersey

The level of contacts required for exercising specific

jurisdiction is significantly less than for general jurisdiction. 

New Jersey Sports Productions, Inc. v. Don King, 15 F.Supp.2d

534, 544 (D.N.J. 1998). For specific jurisdiction to be properly

exercised under the Due Process Clause, the plaintiff must

satisfy a three-prong test. The test considers whether (1) the

defendant purposefully directed its activities to residents of

the forum, (2) the claim arises out of or relates to the

defendant’s activities with the forum, and (3) the assertion of

personal jurisdiction is reasonable and fair. Breckenridge v.

Metabolite Laboratories, Inc., 444 F3d 1356, 1363 (Fed. Cir.

2006). 

10

Case 1:10-cv-06335-NLH-JS Document 18 Filed 09/30/11 Page 10 of 21 PageID: 318
ECR filed this action seeking a declaratory judgment that

its product does not infringe Sebel’s ‘697 patent. In a recent

decision, the Federal Circuit clarified the test to be applied to

determine whether specific jurisdiction exists in a declaratory

judgment action. See Radio Systems Corp. v. Accession, Inc., 638

F.3d 785, 789 (C.A.Fed. 2011). “[T]he relevant inquiry for

specific jurisdiction is ‘to what extent ... the defendant

patentee purposefully directed such enforcement activities at

residents of the forum and the extent to which the declaratory

judgment claim arises out of or relates to those activities.’”

Id. (citing Avocent, 552 F.3d at 1332 (internal quotation marks

and citations omitted)). “Thus, only those activities of the

patentee that relate to the enforcement or defense of the patent

can give rise to specific personal jurisdiction for such an

action.” Id. (citing Avocent, 552 F.3d at 1336; Autogenomics,

Inc. v. Oxford Gene Tech. Ltd., 566 F.3d 1012, 1020 (Fed.Cir.

2009)). 

Here, the only contact with New Jersey is the “cease-anddesist letter” sent in November 2009. The letter relates to the

enforcement or defense of the patent. However, this single

letter sent from Australia to New Jersey does not show that Sebel

purposefully directed its activities to New Jersey. As stated in

Red Wing Shoe, “... ordinary cease-and-desist notices sent by a

patentee to an alleged infringing party in a different state are

11

Case 1:10-cv-06335-NLH-JS Document 18 Filed 09/30/11 Page 11 of 21 PageID: 319
not sufficient to subject the patentee to specific jurisdiction

in that state.” Id., 148 F.3d at 1355. 

Therefore, this Court cannot exercise personal jurisdiction

over Sebel because the single cease and desist letter sent to ECR

in New Jersey does not establish either general or specific

jurisdiction. ECR does not dispute this finding and, in fact,

agrees that the “minimum contacts” needed in New Jersey do not

exist for this Court to exercise personal jurisdiction over

Sebel. However, the plaintiff argues that personal jurisdiction

is proper pursuant to Rule 4(k)(2) because defendant’s contacts

with the United States as a whole provide the amount and type of

contacts needed to establish personal jurisdiction.

C. Personal Jurisdiction under Rule 4(k)(2)

Rule 4(k)(2) of the Federal Rules of Civil Procedure

provides that:

For a claim that arises under federal law, serving a

summons or filing a waiver of service establishes

personal jurisdiction over a defendant if:

(A) The defendant is not subject to jurisdiction in

any state’s courts of general jurisdiction; and

(B) Exercising jurisdiction is consistent with the

United States Constitution and laws.

Fed.R.Civ.P. 4(k)(2). 

Rule 4(k)(2), also known as the federal long-arm statute, 

was adopted to ensure that federal claims have a U.S. forum if

sufficient national contacts exist, even if a non-resident

defendant does not have “minimum contacts” with any individual

12

Case 1:10-cv-06335-NLH-JS Document 18 Filed 09/30/11 Page 12 of 21 PageID: 320
state sufficient to support the exercise of jurisdiction. See 

Touchcom, Inc. v. Bereskin & Parr, 574 F.3d 1403, 1414 (C.A.Fed.

2009). Under Rule 4(k)(2), a plaintiff can establish

jurisdiction over a defendant based on the aggregate contacts of

the defendant with the United States as a whole. Pebble Beach

Co. v. Caddy, 453 F.3d 1151, 1155 (9th Cir. 2006).

Courts in the Federal Circuit have held that a court

exercises jurisdiction over a defendant under this rule only if:

(1) the plaintiff’s claim arises under federal law; (2) the

defendant is not subject to jurisdiction in any state’s courts of

general jurisdiction; and (3) the exercise of jurisdiction

comports with due process. Bradford Co. v. Conteyor North

America, Inc., 603 F.3d 1262, 1272 (2010); see also J. McIntyre

Machinery, Ltd. v. Nicastro, 131 S.Ct. 2780, 2789 (2011) (finding

that a defendant may have the required relationship with the

United States but not with any particular state).

Under this three-part analysis, the first part is satisfied. 

This case involves an alleged patent infringement, a claim which

arises under federal patent law. See 28 U.S.C. §1338 (2006);

Golan v. Pingel Enterprise Inc., 310 F.3d 1360, 1367 (Fed. Cir.

2009)(a cause of action seeking a declaratory judgment of noninfringement of a patent arises under federal patent law). The

parties do not disagree that plaintiff’s claim arises under

federal law. 

13

Case 1:10-cv-06335-NLH-JS Document 18 Filed 09/30/11 Page 13 of 21 PageID: 321
The second part requires a showing that the defendant is not

subject to jurisdiction in any state’s courts of general

jurisdiction. The Federal Circuit has recognized the practical

difficulties with this requirement, referred to as the “negation

requirement,” because it would require that plaintiff either

prove a negative – that defendant is not subject to jurisdiction

in each of the fifty states – or, require “...that the defendant

concede its potential amenability to suit in federal court (by

denying its amenability to suit in any state court) or submitting

to jurisdiction in a particular state, an uninviting choice.” 

Touchcom, 574 F.3d at 1413. 

Accordingly, the Federal Circuit, adopting the rule from the

majority of the other circuit courts, ultimately placed the

burden on the defendant by concluding that if “the defendant

contends that he cannot be sued in the forum state and refuses to

identify any other where suit is possible, then the federal court

is entitled to use Rule 4(k)(2).” Id. at 1415. Here, Sebel has

consented to suit in the United States District Court for the

District of Columbia on the ground that Section 239 of the Patent

Act confers jurisdiction in the U.S. District Court for the 1

 Section 293 of the Patent Act states: 1

If the person designated cannot be found at the

address given in the last designation, or if no

person has been designated, the United States

District Court for the District of Columbia shall

have jurisdiction and summons shall be served by

14

Case 1:10-cv-06335-NLH-JS Document 18 Filed 09/30/11 Page 14 of 21 PageID: 322
District of Columbia over foreign patentee owners. Sebel has 2

publication or otherwise as the court directs. 

The court shall have the same jurisdiction to

take any action respecting the patent or rights

thereunder that it would have if the patentee

were personally within the jurisdiction of the

court.

35 U.S.C. § 293. 

 It seems clear that Sebel, as a foreign patentee owner, is 2

subject to the jurisdiction of the United States District Court

for the District of Columbia in cases involving its patent. See

Touchcom, 574 F.3d at 1412 n. 3 (noting that 35 U.S.C. § 293

applies to confer jurisdiction over a foreign patentee in

proceedings affecting the patent); Autogenomics, Inc. v. Oxford

Gene Technology Ltd., 566 F.3d 1012, 1021 (C.A.Fed. 2009)

(concluding that jurisdiction over foreign patentees is available

in the District Court for the District of Columbia, citing 35

U.S.C. § 293); Avocent, 552 F.3d at 1339 (a district court’s

refusal to exercise personal jurisdiction over a foreign patentee

in a particular state does not foreclose the availability of a

domestic forum because, by statute, “...every foreign patentee is

subject to jurisdiction in at least one state or in the District

of Columbia,” citing Section 293). However, the issue here is not

whether Sebel is subject to jurisdiction in the District of

Columbia but rather whether being subject to jurisdiction in that

court can bar application of Rule 4(k)(2). There is some

question whether the United States District Court for the

District of Columbia is a “state court of general jurisdiction”

as contemplated by Rule 4(k)(2). See Pharmachemie B.V. v.

Pharmacia S.p.A., 934 F.Supp. 484, 488 (D.Mass. 1996); CytoSport,

Inc. v. Cytogenix Sports Laboratories, SRL, No. 2:10-700, 2010 WL

5418883, at *4 n.2 (E.D.Cal. Dec. 23, 2010). In Pharmachemie,

the defendant argued that Rule 4(k)(2) did not apply because as a

foreign patentee owner, it was subject to the jurisdiction of

United States District Court for the District of Columbia

pursuant to Section 293 of the Patent Act. Id., 934 F.Supp. at

488. The court felt that it could not disregard the plain

language of Rule 4(k)(2) which requires that a defendant not be

subject to any state’s courts of general jurisdiction, and held

that since the District Court for the District of Columbia is a

court of limited jurisdiction, jurisdiction in that court did not

bar application of Rule 4(k)(2). Id. Likewise, in CytoSport, the

court noted that the defendant admitted to being subject to

personal jurisdiction in the United States District Court for the

15

Case 1:10-cv-06335-NLH-JS Document 18 Filed 09/30/11 Page 15 of 21 PageID: 323
also consented to suit in the United States District Court for

the Southern District of California.

In Touchcom, the U.S. Court of Appeals for the Federal

Circuit concluded that “...in federal cases, the purposes of Rule

4(k)(2) are best achieved when the defendant is afforded the

opportunity to avoid the application of the rule when it

designates a suitable forum in which the plaintiff could have

brought suit.” 574 F.3d at 1415 (emphasis added). The Court in

Touchcom only required that the defendant name a suitable “forum”

not a specific “state.” Based on Touchcom, Sebel’s consent to

jurisdiction in the U.S. District Court for the District of

Columbia is consent to a suitable “forum” that avoids application

of Rule 4(k)(2). 

In addition, not only did Sebel consent to suit in the U.S.

District Court for the District of Columbia, it also consented to

suit in the U.S. District Court for the Southern District of

California. The U.S. District Court for the Southern District of

California sits in the State of California and exercises

District of Columbia with respect to its trademark applications,

but found this insufficient to counter the second factor under

Rule 4(k)(2). Id., 2010 WL 5418883, at *4 n.2 (Rule 4(k)(2) only

applies when a defendant is “not subject to jurisdiction in any

state’s courts of general jurisdiction” and that United States

District Court for the District of Columbia is not a state court

of general jurisdiction). However, this case raises a slightly

different issue: whether under Touchcom a defendant can consent

to the jurisdiction of the U.S. District Court for the District

of Columbia in order to avoid application of Rule 4(k)(2).

16

Case 1:10-cv-06335-NLH-JS Document 18 Filed 09/30/11 Page 16 of 21 PageID: 324
jurisdiction pursuant to California’s long-arm statute. See

Mavrix Photo, Inc. v. Brand Technologies, Inc., 647 F.3d 1218,

1223 (9 Cir. 2011). A defendant subject to jurisdiction in th

California would bar application of Rule 4(k)(2) which requires

that a defendant not be subject to jurisdiction in “any state’s

courts of general jurisdiction.” It also follows the rule in

Touchcom that allows Sebel to simply consent to suit in

California and avoid application Rule 4(k)(2). 

As stated by the U.S. Supreme Court, the personal

jurisdiction requirement is a waivable right. See Burger King,

471 U.S. at 473. By naming two forums in which it consents to

suit, Sebel has waived its right to contest personal jurisdiction

in those forums and is therefore subject to suit there. Under 3

the rule in Touchcom, Sebel has also avoided the application of

Rule 4(k)(2) by designating a suitable forum in which the

plaintiff could have brought suit. Moreover, since the purpose

of Rule 4(k)(2) is to fill a gap where a defendant has minimum

contacts in the United States, but is not subject to jurisdiction

in any one state, consent to jurisdiction in a particular forum

 We note here, without finding, that we perceive it likely 3

that Sebel is subject to general jurisdiction in one or more

states, likely arising from its 91 shipments of products over a

period of four years or its other ongoing sales and distribution

activities. If we were not to follow the Touchcom rule, we would

order the parties to further develop the record regarding Sebel’s

contacts with the United States regarding the marketing, sale,

and support of its products in this country. 

17

Case 1:10-cv-06335-NLH-JS Document 18 Filed 09/30/11 Page 17 of 21 PageID: 325
or state satisfies the underlying purpose of the rule. See

Touchcom, 574 F.3d at 1414 (“Before the adoption of Rule 4(k)(2),

a non-resident defendant who did not have ‘minimum contacts’ with

any individual state sufficient to support exercise of

jurisdiction, but did have sufficient contacts with the United

States as a whole, could escape jurisdiction in all fifty

states... Rule 4(k)(2) was adopted to ensure that federal claims

will have a U.S. forum if sufficient national contacts exist.”).

Plaintiff argues that defendant cannot simply consent to a

transfer of this action to another state in order to avoid

application of Rule 4(k)(2). See Merial Ltd. v. Cipla Ltd., No.

3:07–125, 2011 WL 2489753, at *8-11 (M.D.Ga. June 21, 2011). In

Merial, the defendant did not designate a suitable forum in which

it could have been sued prior to default judgment being entered

against it, or when it first filed its motion to vacate the

default judgment due to lack of personal jurisdiction. Id. at

*8. After Merial raised Rule 4(k)(2) as a basis for personal

jurisdiction in its response to Cipla’s motion to vacate, Cipla

designated the state of Illinois as a suitable substitute forum. 

Id. The Court found that Cipla’s willingness to consent to

jurisdiction in Illinois so that it could vacate a previously

entered default judgment was not sufficient to support a finding

that it could have been sued in another state and thus avoid Rule

4(k)(2) jurisdiction. Id. at *9. 

18

Case 1:10-cv-06335-NLH-JS Document 18 Filed 09/30/11 Page 18 of 21 PageID: 326
The Merial case is distinguishable. Here, no default

judgment has been entered. In response to the complaint,

defendant filed a motion to dismiss based on lack of

jurisdiction. As the court noted in Merial, Rule 4(k)(2)

requires a determination of whether a state court could have

exercised general jurisdiction over the defendant “at the time

the Complaint ... was filed absent consent to jurisdiction... .” 

Id. (emphasis added). Therefore, we find that Sebel can avoid 4

the application of Rule 4(k)(2) by naming two forums in which it

consents to jurisdiction. The question then arises as to whether

the case should be dismissed or transferred to either forum

pursuant to 28 U.S.C.A. § 1406(a).

D. Section 1406(a)

“Section 1406(a) comes into play where plaintiffs file suit

in an improper forum.” Lafferty v. St. Riel, 495 F.3d 72, 77 (3d

In some sense, the ability of a defendant to simply agree to 4

jurisdiction in another district court to avoid application of

Rule 4(k)(2) might offend the deference usually paid to a

plaintiff’s choice of forum and encourage forum shopping. 

However, deference to a plaintiff’s choice of forum assumes that

jurisdiction is proper in that forum. See Lony v. E.I. Du Pont

de Nemours & Co., 935 F.2d 604, (3d Cir. 1991) (“When a plaintiff

brings an action in a court with jurisdiction, such as here, “a

plaintiff’s choice of forum should rarely be disturbed.”)

(emphasis added). Here, ECR has admitted that the District of

New Jersey cannot exercise personal jurisdiction over the

defendant. Only through the application of Rule 4(k)(2) can

jurisdiction be exercised, but only if the defendant is not

subject to any state’s courts’ jurisdiction. If the defendant

agrees to be subject to suit in a particular state, then the gap

that Rule 4(k)(2) was enacted to cover no longer exists. 

19

Case 1:10-cv-06335-NLH-JS Document 18 Filed 09/30/11 Page 19 of 21 PageID: 327
Cir. 2007) (citing Jumara v. State Farm Ins. Co., 55 F.3d 873,

878 (3d Cir. 1995); 17A Moore’s Federal Practice, § 111.02

(Matthew Bender 3d ed. 2006)). A district court may transfer a

case regardless of whether it has personal jurisdiction. Id.

(citing Goldlawr, 369 U.S. 465-66; United States v. Berkowitz,

328 F.2d 358, 361 (3d Cir. 1964) (holding that a § 1404(a)

transfer was available even though there was no personal

jurisdiction)). 

A district court may elect to transfer a case rather than

dismiss it so that the plaintiff’s claim is not barred by the

statute of limitations. Id. at 79 (finding that the Goldlawr

case established the following: “(1) the § 1406(a) transfer

provision is designed to preserve claims that rigid application

of dismissal rules may bar; (2) § 1406(a) transfers do not

require that prejudice should result from filing an action in an

improper forum if the initial filing was made in good faith; and

(3) the filing itself of a lawsuit, even in an improper forum,

‘shows the proper diligence on the part of the plaintiff which

such statutes of limitation were intended to insure,’ and

‘toll[s] whatever statutes of limitation would otherwise

apply.’”). 

We find that ECR filed this action in good faith. However,

ECR has not raised any concern that dismissal of this case would

bar its claim, or that it would run afoul of any statute of

20

Case 1:10-cv-06335-NLH-JS Document 18 Filed 09/30/11 Page 20 of 21 PageID: 328
limitations if it re-filed its case in either forum identified by

Sebel. In addition, Sebel has named two forums in which it

consents to jurisdiction, but ECR has not provided any indication

as to what forum it would prefer. We believe that choice should

be made by Plaintiff. Thus, the Court will dismiss this action

and ECR is free to re-file its action in the United States

District Court for the District of Columbia, the United States

District Court for the Southern District of California, or any

other court where defendant is subject to suit. 

IV. CONCLUSION

For the reasons expressed above, Sebel’s motion to dismiss

ECR’s complaint for lack of personal jurisdiction will be

granted. This matter will be dismissed. An appropriate Order

will be entered.

Dated: September 30, 2011 s/ Noel L. Hillman 

 NOEL L. HILLMAN, U.S.D.J.

At Camden, New Jersey

21

Case 1:10-cv-06335-NLH-JS Document 18 Filed 09/30/11 Page 21 of 21 PageID: 329