Free Affidavit in Opposition to Motion - District Court of California - California

Case 3:08-cv-01493-JM-BLM

Document 30

Filed 07/28/2008

Page 1 of 36

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

DOWNEY BRAND LLP MICHAEL J. THOMAS (Bar No. 172326) APARNA RAJAGOPAL-DURBIN (Bar No. 218519) 555 Capitol Mall, Tenth Floor Sacramento, CA 95814-4686 Telephone: (916) 444-1000 Facsimile: (916) 444-2100 E-mail: [email protected] E-mail: [email protected] Attorneys for Plaintiff Nutrishare, Inc. UNITED STATES DISTRICT COURT EASTERN DISTRICT OF CALIFORNIA

Nutrishare, Inc., a California corporation, Plaintiff, v. BioRx, LLC, an Ohio Limited Liability Company, Defendant.

Case No. 2:08-CV-01252-WBS-EFB
OPPOSITION TO MOTION TO DISMISS OR TRANSFER VENUE ORAL ARGUMENT REQUESTED Date: Time: Dept: Judge: August 11, 2008 2:00 p.m. Courtroom 5 Hon. William B. Shubb

OPPOSITION TO MOTION TO DISMISS OR TRANSFER

Case 3:08-cv-01493-JM-BLM

Document 30

Filed 07/28/2008

Page 2 of 36

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 III. H. I. J. K. L. M. F. G. I. II.

TABLE OF CONTENTS Page INTRODUCTION...........................................................................................................1 BIORX'S CONTACTS WITH CALIFORNIA ................................................................3 A. BioRx is "licensed to provide products and services in most states." ....................3 B. C. D. E. BioRx's "clinical staff reaches patients and physicians in all 50 states."...............3 BioRx has Obtained Two Licenses to Conduct Business in California as a "Non-Resident" Pharmacy ...................................................................................3 BioRx has an Agent for Service of Process in Sacramento ...................................4 BioRx has Current and Former "NutriThrive" Customers in California, Including within the Eastern District ....................................................................4 BioRx and NutriThrive have an Interactive Web-site for NutriThrive in this Judicial District ....................................................................................................5 NutriThrive has Informed Callers it is Will Serve California Residents and has Mailed its "Patient Orientation" Packet to California Residents......................5 NutriThrive has Relationships with Nursing Agencies within California ..............5 NutriThrive Attended a Key Marketing Event in California, where it Marketed to and Solicited California Residents ....................................................6 BioRx has Exhibited at Other Conferences in California ......................................7 BioRx has Business Partners in California............................................................7 BioRx has Sales Representatives Focused on Western Business...........................7

BioRx May Have Customers, Partners, Suppliers, and Referring Medical Professionals for its Other Product Lines in California .........................................8 ARGUMENT ..................................................................................................................8 A. There is More Than Sufficient Contact Between BioRx and the State of California to Warrant Jurisdiction in This Court ...................................................8 1. This Court has General Jurisdiction over BioRx ........................................9 2. At a Minimum, This Court has Specific Jurisdiction over BioRx .............10 a. BioRx has Purposefully Availed Itself of the Benefits and Privileges of California in Connection with its Infringing Products and Services.................................................................................11 b. BioRx has Purposefully Directed its Infringing Activities Towards California.....................................................................................14 (1) BioRx's Intentionally Infringed Nutrishare's mark knowing Nutrishare is Located in California ...................................15 i
OPPOSITION TO MOTION TO DISMISS OR TRANSFER

Case 3:08-cv-01493-JM-BLM

Document 30

Filed 07/28/2008

Page 3 of 36

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 IV. C. D. B. (2) (3)

TABLE OF CONTENTS (continued) Page BioRx Shipped Infringing Products to California Residents .........................................................................................16

BioRx Maintains an Interactive Web-site that Reaches Out to California Residents .....................................................16 c. Nutrishare's Claims "Arise Out Of" BioRx's Minimum Contacts 19 3. Exercise of Jurisdiction in this Forum Is Reasonable ...............................21 Venue is Proper in the Eastern District ...............................................................24 1. Venue is Proper under 28 U.S.C. § 1391(b)(1).........................................24 2. Venue is Proper under 28 U.S.C. § 1391(b)(2).........................................25 BioRx has Failed to Demonstrate Why this Matter Should Be Transferred to San Diego ......................................................................................................26

If The Court Does Not Deem There to Be Sufficient Jurisdictional Evidence, It Should Permit Limited Jurisdictional Discovery .............................27 CONCLUSION .............................................................................................................27

ii
OPPOSITION TO MOTION TO DISMISS OR TRANSFER

Case 3:08-cv-01493-JM-BLM

Document 30

Filed 07/28/2008

Page 4 of 36

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

TABLE OF AUTHORITIES Page FEDERAL CASES Agilent Techs., Inc. v. Elan Microelectronics Corp., 2005 U.S. Dist. LEXIS 34305 (N.D. Cal. 2005).................................................................. 8 AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979) ............................................................................................ 20 AT&T v. Compagnie Bruxelles Lambert, 94 F.3d 586 (9th Cir. 1996) ................................................................................................ 8 Ballard v. Savage, 65 F.3d 1495 (9th Cir. 1995) .........................................................................................8, 12 Bancroft & Masters, Inc. v. Augusta Nat'l Inc., 223 F.3d 1082 (9th Cir. 2000) .................................................................................9, 11, 18 Bensusan Restaurant Corp., v. King, 937 F. Supp. 295 (S.D.N.Y.1996)..................................................................................... 17 Blumenthal v. Drudge, 992 F. Supp. 44 (D.D.C. 1998) ......................................................................................... 17 Burger King Corp. v. Rudzewicz, 471 U.S. 462 (1985) ..............................................................................................11, 14, 22 Calder v. Jones, 465 U.S. 783 (1984) ..............................................................................................14, 15, 16 Columbia Pictures Television v. Krypton Broadcasting of Birmingham, Inc., 106 F.3d 289 (9th Cir. 1997) .......................................................................................11, 15 CompuServe, Inc. v. Patterson, 89 F.3d 1257 (6th Cir.1996) ............................................................................................. 17 Core-Vent Corp. v. Nobel Indus. AB, 11 F.3d 1482 (9th Cir. 1993) ............................................................................................ 23 Corporate Investment Business Brokers v. Melcher, 824 F.2d 786 (9th Cir. 1987) ............................................................................................ 22 Cybersell, Inc. v. Cybersell, Inc., 130 F.3d 414 (9th Cir. 1997) .......................................................................................16, 17 Data Disc, Inc. v. Systems Technology Associates, Inc., 557 F.2d 1280 (9th Cir. 1977) .......................................................................................... 27 Decker Coal Co. v. Commonwealth Edison Co., 805 F.2d 834 (9th Cir. 1986) .......................................................................................26, 27

iii
OPPOSITION TO MOTION TO DISMISS OR TRANSFER

Case 3:08-cv-01493-JM-BLM

Document 30

Filed 07/28/2008

Page 5 of 36

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

TABLE OF AUTHORITIES (continued) Page Denver & Rio Grande Western R.R. Co. v. Brotherhood of Railroad Trainmen, 387 U.S. 556 (1967) ......................................................................................................... 24 Digital Equipment Corp. v. Altavista Technology, Inc., 960 F. Supp. 456 (D. Mass. 1997) .................................................................................... 18 Doe v. Unocal, 248 F.3d 915 (9th Cir. 2001) .............................................................................................. 8 Dole Food Co., Inc. v. Watts, 303 F.3d 1104 (9th Cir. 2002) ............................................................................................ 8 Dreamwerks Production Group, Inc. v. SKG Studio, 142 F.3d 1127 (9th Cir. 1998) .......................................................................................... 20 E. & J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280 (9th Cir. 1992) .....................................................................................20, 21 Ellis v. Costco Wholesale Corp., 372 F. Supp. 2d 530 (N.D. Cal. 2005)............................................................................... 26 Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135 (9th Cir. 2002) .......................................................................................... 20 Fields v. Sedgwick Assoc. Risks, Ltd., 796 F.2d 299 (9th Cir. 1986) .............................................................................................. 8 Fleischmann Distilling Corp. v. Maier Brewing Co., 314 F.2d 149 (9th Cir. 1963) .......................................................................................20, 21 Flotsam of Cal., Inc. v. Huntington Beach Conf. & Visitors Bureau, 2007 U.S. Dist. LEXIS 9472 (N.D. Cal. 2007) ................................................................. 25 George Kessel Int'l, Inc. v. Classic Wholesales, Inc., 2007 U.S. Dist. LEXIS 83261 (D. Ariz. 2007).............................................................11, 16 Gulf Oil Corp. v. Gilbert, 330 U.S. 501 (1947) ......................................................................................................... 26 Hanson v. Denckla, 357 U.S. 235 (1958) ......................................................................................................... 10 Hatch v. Reliance Ins. Co., 758 F.2d 409 (9th Cir. 1985) ............................................................................................ 26 Helicopteros Nacionales de Colombia, S.A. v. Hall, 466 U.S. 408 (1984) ........................................................................................................... 9 Heroes, Inc. v. Heroes Found., 958 F. Supp. 1 (D.D.C. 1996) ........................................................................................... 17 iv
OPPOSITION TO MOTION TO DISMISS OR TRANSFER

Case 3:08-cv-01493-JM-BLM

Document 30

Filed 07/28/2008

Page 6 of 36

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

TABLE OF AUTHORITIES (continued) Page Hirsch v. Blue Cross, Blue Shield, 800 F.2d 1474 (9th Cir. 1986) ............................................................................................ 9 Hope v. Otis Elevator Co., 389 F. Supp. 2d 1235 (E.D. Cal. 2005) ............................................................................. 26 In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) ............................................................................................. 21 In re Jeep Corp., 222 USPQ 333 (TTAB 1984) ........................................................................................... 21 In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565 (Fed. Cir. 1984)......................................................................................... 21 Inset Systems, Inc. v. Instruction Set, 937 F. Supp. 161 (D. Conn. 1996) .................................................................................... 17 Int'l Shoe Co. v. Washington, 326 U.S. 310 (1945) ......................................................................................................9, 12 IO Group, Inc. v. Pivotal, No. C 03-5286 MHP, 2004 U.S. Dist. LEXIS 6673, (N.D. Cal. Apr. 19, 2004)................. 15 Keeton v. Hustler Magazine, Inc., 465 U.S. 770 (1984) ......................................................................................................... 14 Mahroom v. Best Western Int'l, Inc., 2007 U.S. Dist. LEXIS 56006, *7 (N.D. Cal. 2007).....................................................10, 13 Maritz, Inc. v. Cybergold, Inc., 947 F. Supp. 1328 (E.D.Mo.1996)...............................................................................17, 18 Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002) ............................................................................................ 14 MCA Records, Inc. v. Charly Records, Ltd., 1997 U.S. App. LEXIS 3684, *8 (9th Cir. 1997) .........................................................11, 16 McGee v. International Life Ins. Co., 355 U.S. 220 (1957) ....................................................................................................10, 16 Menken v. Emm, 503 F.3d 1050 (9th Cir. Ariz. 2007).................................................................................. 23 Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 243 F.Supp.2d 1073 (C.D. Cal. 2003)............................................................................... 15 Morgan Stanley High Yield Secs., Inc. v. Jecklin, 2006 U.S. Dist. LEXIS 53489 (D. Nev. 2006) .................................................................. 12 v
OPPOSITION TO MOTION TO DISMISS OR TRANSFER

Case 3:08-cv-01493-JM-BLM

Document 30

Filed 07/28/2008

Page 7 of 36

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

TABLE OF AUTHORITIES (continued) Page Nissan Motor Co. v. Nissan Computer Corp., 246 F.3d 675, 2000 U.S. App. LEXIS 33937 (9th Cir. Dec. 26, 2000). ......................11, 15 On-line Careline Inc. v. America Online Inc., 229 F.3d 1080 (Fed. Cir. 2000)......................................................................................... 20 Panavision Int'l, L.P. v. Toeppen, 141 F.3d 1316 (9th Cir. 1998) ..................................................................... 9, 11, 15, 17, 18 Pebble Beach Co. v. Caddy, 453 F.3d 1151 (9th Cir. 2006) ...................................................................................8, 9, 16 Perkins v. Benguet Consol. Mining Co., 342 U.S. 437 (1952) ........................................................................................................... 9 Plant Food Co-Op v. Wolfkill Feed & Fertilizer Corp., 633 F.2d 155 (9th Cir. 1980) ............................................................................................ 14 Radical Prods., Inc. v. Sundays Distrib., 821 F. Supp. 648 (W.D. Wash. 1992) ............................................................................... 25 Rio Props. v. Rio Int'l Interlink, 284 F.3d 1007 (9th Cir. 2002) .......................................................................................... 18 Schwarzenegger v. Fred Martin Motor Co., 374 F.3d 797 (9th Cir. 2004) .................................................................................11, 12, 14 Sher v. Johnson, 911 F.2d 1357 (9th Cir. Cal. 1990) ..............................................................................21, 22 Sidco Indus., Inc. v. Wimar Tahoe Corp., 768 F. Supp. 1343 (D. Or.1991) ....................................................................................... 25 Sinatra v. National Enquirer, Inc., 854 F.2d 1191 (9th Cir. 1988) .....................................................................................22, 23 Stewart Org., Inc. v. Ricoh Corp., 487 U.S. 22 (1988) ........................................................................................................... 26 Sykes Lab., Inc. v. Kalvin, 610 F. Supp. 849 (C.D. Cal. 1985).................................................................................... 25 Telco Communications v. An Apple A Day, 977 F. Supp. 404 (E.D. Va. 1997)..................................................................................... 18 Tillamook Country Smoker v. Tillamook County Creamery Ass'n, 311 F. Supp. 2d 1023 (D. Or. 2004).................................................................................. 21 Tuazon v. R.J. Reynolds Tobacco Co., 433 F.3d 1163 (9th Cir. 2006) ............................................................................................ 9 vi
OPPOSITION TO MOTION TO DISMISS OR TRANSFER

Case 3:08-cv-01493-JM-BLM

Document 30

Filed 07/28/2008

Page 8 of 36

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

TABLE OF AUTHORITIES (continued) Page United States Aluminum Corp. v. Kawneer Co., 694 F. 2d 193 (9th Cir. 1982) ........................................................................................... 25 Wells v. Cingular Wireless LLC, 2006 U.S. Dist. LEXIS 73664 (N.D. Cal. 2006)................................................................ 24 World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286 (1980) ..............................................................................................10, 11, 14 Zippo Mfr. Co. v. Zippo Dot Com, Inc., 952 F. Supp. 1119 (W.D. Pa. 1997) .................................................................................. 17 FEDERAL STATUTES 28 U.S.C. § 1391(b)(1)........................................................................................................... 24 28 U.S.C. § 1391(b)(2)......................................................................................................24, 25 28 U.S.C. § 1391(c) ............................................................................................................... 24 28 U.S.C. § 1404.................................................................................................................... 26 STATE STATUTES Cal. Bus. & Prof. Code § 4086 .................................................................................. 1, 4, 10, 13 Cal. Bus. & Prof. Code § 4112 ........................................................................................1, 4, 13 Cal. Bus. & Prof. Code § 4123 ............................................................................................... 12 Cal. Bus. & Prof. Code §§ 4127 et seq. .................................................................................. 12 Cal. Bus. & Prof. Code §§ 4300 et seq. ..................................................................... 1, 4, 10, 13 Cal. Code of Civ. Proc. § 410.10 .............................................................................................. 9 FEDERAL RULES Fed. Rul. Civ. Proc. 4(k)(2)...................................................................................................... 9 STATE REGULATIONS Cal Code Regs. §§ 1751 et seq. ...........................................................................................1, 12 OTHER AUTHORITY 4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §24:13 (3d ed. 2008) .......................... 20 Trademark Manual of Examining Procedure § 1201(a)(i) ..................................................20, 21 vii
OPPOSITION TO MOTION TO DISMISS OR TRANSFER

Case 3:08-cv-01493-JM-BLM

Document 30

Filed 07/28/2008

Page 9 of 36

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

I.

INTRODUCTION

Defendant BioRx ­ after applying for and obtaining two licenses with the California Board of Pharmacy located in Sacramento permitting it to conduct business in California, including to ship its NutriThrive products to California residents in their homes, after designating an agent for service of process in Sacramento in its pharmacy license applications, and after admitting that it has customers for its NutriThrive products within California ­ now moves to dismiss or transfer this trademark infringement action on the grounds that it "has no contacts with this State" and "no contacts in this district." (See Memo of Points & Authorities in support of Defendant's Motion to Dismiss or Transfer, filed 7/23/08 (hereinafter "Motion") at 1:7-8; 2:26.) It is baffling how BioRx could possibly argue that it is not subject to personal jurisdiction or venue here in light of the overwhelming evidence to the contrary. BioRx's internally inconsistent moving brief and its president's declaration are replete with, on the one hand bald and patently false statements eschewing any contact with this state or district, and on the other hand admissions that BioRx does indeed do business in this State. Indeed, investigations have revealed that BioRx has such extensive contacts with California and this district that jurisdiction ­ and therefore venue ­ is more than proper in this Court. Most compelling is the fact that, contrary to its statement that it "does not do business in California" (motion at 1), BioRx specifically applied for and obtained two licenses in Sacramento authorizing it to conduct business as a non-resident pharmacy and to conduct sterile compounding activities within California. (Declaration of Rodney Okamoto filed herewith (hereinafter "Okamoto Decl."), Ex. C.) Furthermore, contrary to BioRx's claim that it "has no agent for service of process in this state" (motion at 1), as a prerequisite to obtaining its pharmacy licenses, and under the California pharmacy law, BioRx necessarily submitted to the jurisdiction of California courts and the Board of Pharmacy in Sacramento and appointed Business Filings, Inc, located at 1232 Q Street, Sacramento, as its agent for service of process. (Declaration of Aparna Rajagopal-Durbin filed herewith (hereinafter "Durbin Decl.," ¶ 6, Ex. E.); see also Cal. Bus. & Prof. Code §§ 4086, 4300 et seq., 4112. These licenses have authorized BioRx, from a licensure standpoint, to conduct its infringing activities in California as "NutriThrive," including to ship
940766.2

1
OPPOSITION TO MOTION TO DISMISS OR TRANSFER

Case 3:08-cv-01493-JM-BLM

Document 30

Filed 07/28/2008

Page 10 of 36

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

total parenteral nutrition and enteral nutrition products bearing the infringing "NutriThrive" mark to its California customers. Cal Code Regs. §§ 1751 et seq. BioRx's claim that it "has never sought to obtain clients or business directly from the state of California," (motion at 2:5-6.) are likewise specious. Nutrishare knows of at least four BioRx customers in this state, including within this very district, who have received NutriThrive products and services. (Okamoto Decl., ¶ 6, Ex. D, ¶ 11; Declaration of Craig Rielly in support of BioRx's Motion to Dismiss and/or Transfer Venue filed 6/16/08, ("hereinafter Rielly Decl.") ¶¶ 12, 13.) And NutriThrive may be procuring more California customers this very moment. Less than three months ago, NutriThrive fielded multiple calls from Nutrishare investigators who inquired regarding whether it would provide its products and services within California. (Okamoto Decl., ¶ 13; Declaration of Kathryn Bundy filed herewith (hereinafter "Bundy Decl."), ¶ 3.) In each instance, NutriThrive's response was a resounding "yes." (Id.) In one instance, NutriThrive actually sent its "Patient Orientation" packet, including a thick binder and promotional materials, to the California caller. (Bundy Decl., ¶ 3.) Less than a month ago, NutriThrive was pounding the pavement in San Diego marketing to, soliciting, and aggressively pursuing California customers. (Okamoto Decl., ¶¶ 7-10, 11; Messina Decl., ¶ 4; Bundy Decl., ¶¶ 4-5.) BioRx's own president has admitted that NutriThrive has at least two California customers who were procured "as a result of the customers contacting BioRx through its internet website." (Rielly Decl., ¶¶ 12, 13.) By this statement, Mr. Reilly also has admitted that BioRx has an interactive web-site for its NutriThrive product line which is accessible by any person in this judicial district. This web-site on multiple pages extols BioRx's "reach" within all 50 states and boasts that BioRx is licensed in most states. (Okamoto Decl., Ex A.) This is only the tip of the iceberg, gleaned by nothing more than a few phone calls, attendance at a conference, perusal of BioRx's web-sites, and keyword searches on www.google.com. Nutrishare has not yet been permitted to conduct any formal discovery. Nevertheless, even the limited information that Nutrishare has thus far uncovered demonstrates without a doubt that both jurisdiction and venue are proper in this Court. BioRx's motion should therefore be summarily denied. In the event that the Court does not find the evidence gathered
940766.2

2
OPPOSITION TO MOTION TO DISMISS OR TRANSFER

Case 3:08-cv-01493-JM-BLM

Document 30

Filed 07/28/2008

Page 11 of 36

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

thus far to be sufficient, Nutrishare requests that the Court at least permit additional limited jurisdictional discovery prior to ruling on BioRx's motion. II. BIORX'S CONTACTS WITH CALIFORNIA

Through Nutrishare's initial investigations, and without having had the benefit of discovery, Nutrishare has learned that BioRx has at least the following contacts with the State of California and this judicial district. A. BioRx is "licensed to provide products and services in most states." Contrary to BioRx's statements that it "has never sought to obtain clients or business directly from the State of California," (motion at 4:12), the "About Us" page on BioRx's interactive web-site, www.biorx.net, beckons to California customers immediately below and in the same space the "NutriThrive" logo and description, as follows:
Improving life on nutrition support.

BioRx is licensed to provide products and services in most states. Call us at 866-44-BIORX to inquire as to service availability in your area.

(Okamoto Decl., Ex. B.) B. BioRx's "clinical staff reaches patients and physicians in all 50 states." The "BioRx News" page likewise reaches out to California customers. In a press release about its immunoglobulin services for patients suffering from immune deficiency disorders, BioRx states, "As one of the nation's fastest growing providers of IgG and other specialty pharmaceuticals, the company's clinical staff reaches patients and physicians in all 50 states. To learn more about BioRx and its products and services visit www.biorx.net." (Okamoto Decl., Ex. A.) (emphasis added). C. BioRx has Obtained Two Licenses to Conduct Business in California as a "NonResident" Pharmacy. Pursuant to the requirements of the California Pharmacy Law codified in the Business and Professions Code, BioRx has specifically applied for and obtained, with the California Board of Pharmacy, located at 1625 N Market Blvd, N219, Sacramento, California, 95834, two licenses
940766.2

3
OPPOSITION TO MOTION TO DISMISS OR TRANSFER

Case 3:08-cv-01493-JM-BLM

Document 30

Filed 07/28/2008

Page 12 of 36

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

authorizing it to distribute pharmaceuticals within California and conduct sterile compounding activities within California as an non-resident pharmacy. (Okamoto Decl., Ex. C.) These licenses issued in September 2007 and July 2008, respectively. (Id.) As will be explained in more detail below, although NutriThrive has not separately obtained licenses, NutriThrive, as a d/b/a of BioRx, requires and necessarily must rely on BioRx's licenses in order to provide any of its products or services to California residents. D. BioRx has an Agent for Service of Process in Sacramento. Contrary to BioRx's claim that "it has no agent for service of process in the state" (motion at 1:6), BioRx has appointed Business Filings, Inc., located at 1232 Q. Street, 1st Floor, Sacramento, California, as its agent for service of process in California pursuant to the requirements of California pharmacy law. (Durbin Decl., Ex. E; see also Cal. Bus. & Prof. Code §§ 4086, 4300 et seq., 4112.) E. BioRx has Current and Former "NutriThrive" Customers in California, Including within the Eastern District. Discussions on on-line consumer forum www.parent-2-parent.com indicate that NutriThrive has customers in Redding, California, within the Eastern District. (Okamoto Decl., ¶ 6, Ex. D.) These postings indicate that Jessi, mother of two boys, Jaxson and Joshua, is an active participant on the forum has been posting messages on the forum since at least February, 2008, has posted at least 500 messages to the forum since mid-April, and posts numerous messages nearly every day. (Durbin Decl., ¶ 5.) In mid-April, Jessi posted a message indicating she had switched her son's home infusion provider to NutriThrive. (Okamoto Decl., ¶ 6, Ex. D.) Unfortunately, Nutrishare has been unable to determine Jessi's full name or address. (Durbin Decl., ¶ 5.) However, if the Court requires additional evidence regarding the Redding family, Nutrishare requests that the Court permit Nutrishare to conduct limited jurisdictional discovery in order to confirm that Jessi and her family are indeed NutriThrive customers. At the Oley Conference held in San Diego on June 26 through June 29, 2008, Nutrishare learned that NutriThrive has had at least one additional TPN customer in California. (Okamoto Decl, ¶ 11.) This customer, Rosemarie Mielke of Lancaster, California, subsequently changed
940766.2

4
OPPOSITION TO MOTION TO DISMISS OR TRANSFER

Case 3:08-cv-01493-JM-BLM

Document 30

Filed 07/28/2008

Page 13 of 36

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

her home infusion provider to Crescent Healthcare. (Id.) Nutrishare learned from BioRx's most recent court filing that NutriThrive has at least two additional customers who live in California. In his July 16, 2008 Declaration, BioRx's president Phillip Rielly stated. NutriThrive does . . . have two customers located in California who receive Enteral Nutrition products from BioRx. . . . BioRx delivers product to these customers on a monthly basis by federal express delivery from Cincinnati, Ohio. (Rielly Decl., ¶¶ 12, 13.) F. BioRx and NutriThrive have an Interactive Web-site for NutriThrive in this Judicial District. BioRx and NutriThrive have an interactive web-site accessible to all Internet users in California, including those in the Eastern District. (Okamoto Decl., Ex. A, B.) In the words of BioRx's own president, NutriThrive obtained at least two California customers "as a result of these customers contacting BioRx through its internet website." (Rielly Decl., ¶ 13.) Indeed, anybody in California can, through www.nutrithrive.com, request NutriThrive products and services, refer patients to NutriThrive, sign up to become a "NutriThrive consumer," and participate in on-line discussions with NutriThrive's customers, clinicians and "consumer advocates." (Okamoto Decl., Ex. B.) G. NutriThrive has Informed Callers it is Will Serve California Residents and has Mailed its "Patient Orientation" Packet to California Residents. NutriThrive has represented to callers that it is permitted to conduct business in California and will send its informational packets to TPN consumers in California. (Okamoto Decl., ¶ 13; Bundy Decl., ¶ 3.). NutriThrive also actually sent a "Patient Orientation" packet containing its promotional materials and business card to a TPN consumer who lives in California. (Bundy Decl., Ex. A.) H. NutriThrive has Relationships with Nursing Agencies within California. NutriThrive also represented to one caller that, although it is based on Ohio, it has established relationships with local nursing agencies in California. (Bundy Decl., ¶ 3.)

940766.2

5
OPPOSITION TO MOTION TO DISMISS OR TRANSFER

Case 3:08-cv-01493-JM-BLM

Document 30

Filed 07/28/2008

Page 14 of 36

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

I.

NutriThrive Attended a Key Marketing Event in California, where it Marketed to and Solicited California Residents. As BioRx's president has admitted, NutriThrive attended the 2008 Oley Conference held

at the Mission Valley Marriott Hotel in San Diego between June 26 and June 29, 2008, where NutriThrive actively marketed products and services bearing the mark in dispute. This is a key marketing event for national home infusion companies. (Rielly Decl., ¶ 14.) This was an especially important marketing event for NutriThrive, as evidenced by the following announcement emblazoned across the center of its home page at www.nutrithrive.com:
Annual OLEY Conference June 26­30 Marriott San Diego Mission Valley, California www.oley.org or (800)776-6539

(See Okamoto Decl., Ex. B.) In fact, on the day Nutrishare's Complaint, summons, and preliminary injunction papers were served, both Nutrishare and NutriThrive were attending the Oley Conference (Okamoto Decl., ¶ 7.) There were approximately 200 conference attendees, the majority of whom are home infusion consumers, and several of whom are California residents (Id.) There were twenty-two companies that exhibited their products and/or services at booths in the exhibit hall. (Id., Ex. E.) Eleven of those companies were home infusion providers. (Id.) Nine of those companies were national (versus local/regional) home infusion providers. (Id.) Nutrishare and BioRx d/b/a NutriThrive were two of the nine national home infusion providers. (Id.) At the conference, NutriThrive's name was prominently displayed on a banner hanging at the entryway to the conference facilities, immediately below Nutrishare's name in the same font size, color, and typeface. (Id., Ex. F.) This banner was displayed throughout the duration of the conference. (Id., ¶ 8, Ex. F.) In the exhibition hall, which was the only place where home infusion companies were permitted to display and market their products, both Nutrishare and NutriThrive had prominent booths, each at one of the two back corners of the hall. (Id., ¶ 9, Ex. G.) NutriThrive's booth was staffed by, among others, Donna Noble (the mother of Nutrishare's former customer). (Id., ¶ 9.) At NutriThrive's booth, conference attendees and/or exhibitors were provided with NutriThrive's promotional materials. (Id.)
940766.2

6
OPPOSITION TO MOTION TO DISMISS OR TRANSFER

Case 3:08-cv-01493-JM-BLM

Document 30

Filed 07/28/2008

Page 15 of 36

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

On the Friday and Saturday of the conference, there was a conference-wide luncheon. Friday's lunch was sponsored by NutriThrive. On the day of this luncheon, NutriThrive's name was prominently displayed throughout the day on placards placed on the lunch buffet tables. (Id., ¶ 10; Bundy Decl., ¶ 4.) During the conference, a California resident, Kerry Stone of La Jolla, California, became confused and erroneously believed that the Friday luncheon was sponsored by Nutrishare. (See Declaration of Kerry Stone, filed 7/15/08). Also during the conference, another California resident, Sheila Messina of San Jose, California, noticed NutriThrive's booth and was curious about the new company. (Messina Decl., ¶¶ 3-4.) Yet another California resident, Kathryn Bundy of Los Angeles, California, felt uncomfortable when NutriThrive aggressively solicited her outside the allotted marketing period in contravention of Oley Foundation rules. (Bundy Decl., ¶ 5.) J. BioRx has Exhibited at Other Conferences in California. Based only on a search on www.google.com, Nutrishare has been able to identify at least two other conferences in California where BioRx was in attendance and had an exhibition booth. BioRx was an exhibitor in the 2005 annual meeting of the American Association of Neuromuscular and ElectroDiagnostic Medicine, which was held in Monterey, California. (Durbin Decl., Ex. A .) Furthermore, on the same day as the Oley Conference this year, BioRx was in attendance and marketing its products and services at the San Francisco-based Neuropathy Action Foundation's "Neuropathy Action Awareness Day," held at the University of California San Francisco's Mission Bay Conference Center. (Id., Ex. B.) K. BioRx has Business Partners in California. A www.google.com search also revealed that BioRx worked with Bayer Healthcare, based in Berkeley, California, to publish a children's book on hemophilia entitled "The Great Inhibitor," in July, 2006. (Id., Ex. C.) L. BioRx has Sales Representatives Focused on Western Business. Nutrishare has also learned that, as of 2006, BioRx had a Director of Business Development for the West, Julie Winston. (Id., Ex. D.) Obviously its efforts have succeeded, as
940766.2

7
OPPOSITION TO MOTION TO DISMISS OR TRANSFER

Case 3:08-cv-01493-JM-BLM

Document 30

Filed 07/28/2008

Page 16 of 36

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

BioRx has developed business in California. M. BioRx May Have Customers, Partners, Suppliers, and Referring Medical Professionals for its Other Product Lines in California. In its brief, BioRx admits to having three product lines outside the enteral and parenteral nutrition products and services offered by its NutriThrive division. However, noticeably absent from the brief is any mention of whether BioRx has any customers, partners, suppliers, or referring physicians for these other product lines. Given that BioRx has obtained two licenses to conduct all of its home infusion activities within this State, it is highly likely that BioRx has contacts with respect to its non-TPN products lines within California, and perhaps within this district. Should the Court require additional evidence to resolve BioRx's motion, Nutrishare requests that it grant Nutrishare leave to serve limited jurisdictional discovery in order to ascertain these contacts, which would support a finding of general jurisdiction. The nature of this discovery is outlined in greater detail in section III(D) below. III. A. ARGUMENT

There is More Than Sufficient Contact Between BioRx and the State of California to Warrant Jurisdiction in This Court. To establish jurisdiction, BioRx need only make a prima facie showing of facts that, if

true, would support jurisdiction over the defendant. Pebble Beach Co. v. Caddy, 453 F.3d 1151, 1154 (9th Cir. 2006); Doe v. Unocal, 248 F.3d 915, 922 (9th Cir. 2001); Ballard v. Savage, 65 F.3d 1495, 1498 (9th Cir. 1995); Fields v. Sedgwick Assoc. Risks, Ltd., 796 F.2d 299, 301 (9th Cir. 1986); see also Agilent Techs., Inc. v. Elan Microelectronics Corp., 2005 U.S. Dist. LEXIS 34305, *8-10 (N.D. Cal. 2005). Moreover, for the purpose of a motion to dismiss for lack of jurisdiction, the Court should resolve all disputed facts in favor of the plaintiff, here, Nutrishare. Dole Food Co., Inc. v. Watts, 303 F.3d 1104, 1108 (9th Cir. 2002); Pebble Beach Co., 453 F.3d at 1154 (citing Doe, 248 F.3d at 922); AT&T v. Compagnie Bruxelles Lambert, 94 F.3d 586, 588 (9th Cir. 1996). The general rule is that personal jurisdiction over a defendant is proper if it is permitted by a long-arm statute and if the exercise of that jurisdiction does not violate federal due process.
940766.2

8
OPPOSITION TO MOTION TO DISMISS OR TRANSFER

Case 3:08-cv-01493-JM-BLM

Document 30

Filed 07/28/2008

Page 17 of 36

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

Pebble Beach Co., 453 F.3d at 1155 (citations omitted). Here, both the California and Federal long-arm statutes ­ Cal. Code of Civ. Proc. Section 410.10 and Federal Rule of Civil Procedure 4(k)(2) ­ require compliance with due process requirements. Id. Consequently, whether or not this Court has personal jurisdiction over BioRx hinges on due process. The Due Process Clause permits a court to exercise personal jurisdiction over an out-ofstate defendant when the defendant has such "minimum contacts" with the forum state that maintenance of the suit would not offend "traditional notions of fair play and substantial justice." Int'l Shoe Co. v. Washington, 326 U.S. 310, 316 (1945). Personal jurisdiction may be either general or specific. Panavision Int'l, L.P. v. Toeppen, 141 F.3d 1316, 1320 (9th Cir. 1998). As demonstrated below, BioRx's laundry list of contacts with the State of California meets both the requirements for general and specific jurisdiction. 1. This Court has General Jurisdiction over BioRx.

BioRx will be subject to the general jurisdiction of this Court if the quality and nature of its contacts with California are so "substantial, continuous, and systematic" that due process is not offended. Helicopteros Nacionales de Colombia, S.A. v. Hall, 466 U.S. 408, 414-16 (1984). To determine whether there is general jurisdiction, courts examine "whether defendant makes sales, solicits or engages in business in the state, serves the state's markets, designates an agent for service of process, holds a license, or is incorporated there." Bancroft & Masters, Inc. v. Augusta Nat'l Inc., 223 F.3d 1082, 1086 (9th Cir. 2000) (citing Hirsch v. Blue Cross, Blue Shield, 800 F.2d 1474, 1478 (9th Cir. 1986)). Courts have also considered whether the defendant has physical facilities or bank accounts in the state, or has conducted meetings in the state. Perkins v. Benguet Consol. Mining Co., 342 U.S. 437, 445 (1952). The evidence uncovered thus far establishes that BioRx's contacts with California have been substantial, continuous, and systematic. BioRx applied for two licenses to conduct pharmacy-related activities in this state, which issued on September 11, 2007 and July 8, 2008. (Okamoto Decl., Ex. C; see also Tuazon v. R.J. Reynolds Tobacco Co., 433 F.3d 1163, 1174 (9th Cir. 2006) (finding general jurisdiction over nonresident defendant based on license to do business in the forum.)) In obtaining these licenses, BioRx also submitted to the general
940766.2

9
OPPOSITION TO MOTION TO DISMISS OR TRANSFER

Case 3:08-cv-01493-JM-BLM

Document 30

Filed 07/28/2008

Page 18 of 36

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

jurisdiction of California courts and the California Board of Pharmacy. See Cal. Bus. & Prof. Code §§ 4300 et seq.; 4086. Also in connection with obtaining its business licenses, BioRx designated an agent for service of process in Sacramento, California in its license applications. (Durbin Decl., Ex. E.) Thus, BioRx's claims that it "has no agent for service of process in this state" (motion at 1:6-7) is patently false. Based solely on its appointment of this agent, BioRx is subject to jurisdiction in California. Mahroom v. Best Western Int'l, Inc., 2007 U.S. Dist. LEXIS 56006, *7 (N.D. Cal. 2007) (finding general jurisdiction where defendant "regularly conducts business in California, and it even has a registered agent in California who is allowed to receive service of process"). Although Nutrishare has not yet determined when BioRx began conducting business in California, Nutrishare has learned that BioRx has frequently attended meetings and conferences in California, dating as far back as 2005. (Durbin Decl., ¶ 2.) BioRx also has business partners in this state, including Bayer Healthcare (which relationship dates back to at least 2006) and local nursing agencies. (Durbin Decl., ¶ 3; Bundy Decl., ¶ 3.) BioRx also has at least four customers in California for its NutriThrive products and services. (Rielly Decl.., ¶¶ 12, 13; Okamoto Decl., ¶ 11.) BioRx also may have customers for its other product lines, including its hemophilia and immunoglobulin services, in California. And as with its NutriThrive products and services, BioRx may have contracts or relationships with local nursing agencies, other medical professionals, and vendors with respect to these other product lines. BioRx may also have California-based employees and/or sales representatives for these other services. All of these contacts, if they exist, would support a finding of general jurisdiction. If the Court requires evidence of such contacts, Nutrishare requests leave to conduct limited jurisdictional discovery to ascertain the nature and extent of these contacts with California. Based on the above evidence, this Court has general jurisdiction over BioRx. 2. At a Minimum, This Court has Specific Jurisdiction over BioRx.

BioRx will be subject to the specific jurisdiction of this Court if the facts of this lawsuit are related to or arise out of its "minimum contacts" with California. McGee v. International Life Ins. Co., 355 U.S. 220 (1957); Hanson v. Denckla, 357 U.S. 235, 251 (1958); World-Wide
940766.2

10
OPPOSITION TO MOTION TO DISMISS OR TRANSFER

Case 3:08-cv-01493-JM-BLM

Document 30

Filed 07/28/2008

Page 19 of 36

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

Volkswagen Corp. v. Woodson, 444 U.S. 286 313 (1980). The Ninth Circuit has held that specific jurisdiction exists if (1) the defendant has performed some act or consummated some transaction within the forum or otherwise purposefully availed itself of the privileges of conducting activities in the forum; (2) the plaintiff's claims arise out of or results from defendants forum-related activities; and (3) the exercise of jurisdiction is reasonable. Bancroft & Masters, Inc. v. Augusta Nat. Inc. 223 F.3d 1082, 55 U.S.P.Q.2d 1941 (9th Cir. 2000); see also Burger King Corp. v. Rudzewicz, 471 U.S. 462, 475, 85 L. Ed. 2d 528, 105 S. Ct. 2174 (1985). The first part of this test has been further subdivided into two distinct questions: whether BioRx either (1) "purposefully availed" itself of the privilege of conducting activities in the forum, or (2) "purposefully directed" its activities toward the forum. Schwarzenegger v. Fred Martin Motor Co., 374 F.3d 797, 802 (9th Cir. 2004). In the context of a trademark infringement action, the Ninth Circuit has held that specific jurisdiction exists when the plaintiff alleges that defendant intentionally infringed plaintiff's rights knowing that plaintiff was located in the forum state. Columbia Pictures Television v. Krypton Broadcasting of Birmingham, Inc., 106 F.3d 289 (9th Cir. 1997); Panavision Intern., L.P. v. Toeppen, 141 F.3d 1316, 1321 (9th Cir. 1998); Nissan Motor Co. v. Nissan Computer Corp., 246 F.3d 675, 2000 U.S. App. LEXIS 33937, *2 (9th Cir. Dec. 26, 2000). The case for specific jurisdiction becomes even compelling if the alleged infringer advertises or sells its allegedly infringing products in the forum state. See, e.g., MCA Records, Inc. v. Charly Records, Ltd., 1997 U.S. App. LEXIS 3684, *8 (9th Cir. 1997); George Kessel Int'l, Inc. v. Classic Wholesales, Inc., 2007 U.S. Dist. LEXIS 83261, *16 (D. Ariz. 2007). For the reasons set forth below, this Court has specific jurisdiction over BioRx. a. BioRx has Purposefully Availed Itself of the Benefits and Privileges of California in Connection with its Infringing Products and Services.

The requirement of purposeful availment ensures that the defendant should reasonably anticipate being haled into the forum State court based on its contacts. World-Wide Volkswagen Corp., 444 U.S. at 297. The purposeful availment test is met where "the defendant has taken deliberate action within the forum state or if he has created continuing obligations to forum
940766.2

11
OPPOSITION TO MOTION TO DISMISS OR TRANSFER

Case 3:08-cv-01493-JM-BLM

Document 30

Filed 07/28/2008

Page 20 of 36

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

residents." Ballard, 65 F.3d at 1498. Evidence of purposeful availment is typically action taking place in the forum that invokes the benefits and protections of the laws in the forum, such as executing or performing a contract. Schwarzenegger v. Fred Martin Motor Co., 374 F.3d 797, 802, 803 (9th Cir. 2004). There could be no more direct way of purposefully availing oneself of the benefits and privileges of California than applying for and obtaining a license authorizing one to conduct certain businesses within this state. The Supreme Court best articulated this rationale in International Shoe when it stated: [T]o the extent that a corporation exercises the privilege of conducting activities within a state, it enjoys the benefits and protection of the laws of that state. The exercise of that privilege may give rise to obligations, and, so far as those obligations arise out of or are connected with the activities within the state, a procedure which requires the corporation to respond to a suit brought to enforce them can, in most instances, hardly be said to be undue. Int'l Shoe Co., 326 U.S. at 319. Courts of this Circuit have followed suit. For example, in ruling on a motion to dismiss a complaint against a company that had acquired a license to conduct gaming activities within Nevada, a court of this Circuit held: Defendants purposely availed themselves of the privilege of conducting activities in Nevada, and invoking the benefits and protections of Nevada's laws, . . . by acquiring a Nevada gaming license. . . . Both [Defendants] were registered as doing business in Nevada to aid in the [project that is the subject of Plaintiff's Complaint.] Even if . . . Defendants . . . never conducted any business in Nevada besides obtaining a license, voluntary compliance with a state's corporation law is a contact which facilitates significant privileges for conducting activities within that state. Furthermore, the business licenses . . . arise out of activities surrounding [the project that is the subject of Plaintiff's Complaint.] Morgan Stanley High Yield Secs., Inc. v. Jecklin, 2006 U.S. Dist. LEXIS 53489, * 7-8 (D. Nev. 2006) (emphasis added). In this case, BioRx has not only obtained one, but two licenses specifically authorizing it to conduct the activities from which Nutrishare's complaint arose: compounding total parenteral and enteral nutrition solutions and shipping them to California residents under the "NutriThrive" mark. See Cal. Bus. & Prof. Code §§ 4123 (requiring that licensed pharmacies report
940766.2

12
OPPOSITION TO MOTION TO DISMISS OR TRANSFER

Case 3:08-cv-01493-JM-BLM

Document 30

Filed 07/28/2008

Page 21 of 36

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

compounding drugs for parenteral therapy to the Board of Pharmacy), 4127 et seq. (specific license required for sterile compounding activities); Cal Code Regs. §§ 1751 et seq. (in-home parenteral therapy requires specific license and procedures). Thus, under Morgan Stanley High Yield Secs., Inc., even if BioRx has not conducted any business in California other than obtaining these licenses, it would meet the purposeful availment requirement. That said, BioRx actually marketed and sold its NutriThrive products and services in California under these licenses. (Rielly Decl., ¶¶ 12-13; Okamoto Decl., ¶ 6, Ex. D; Bundy Decl., ¶¶ 3-5; Messina Decl., ¶¶ 3-4.) In exchange for the benefits and privileges of these licenses, BioRx has agreed to be subject to the jurisdiction of the California Board of Pharmacy in relation to violations of the law requiring suspension or revocation of its pharmacy licenses. Cal. Bus. & Prof. Code §§ 4300 et seq. Furthermore, BioRx has agreed to be subject to the jurisdiction of the courts of this State, including the courts of this district, in matters related to its violations of pharmacy law. For example, if BioRx's Redding-based NutriThrive customers receive a NutriThrive TPN nutrient solution that they allege is adulterated, the California Board of Pharmacy can commence proceedings against BioRx in a Shasta County court ­ within this judicial district. Cal Bus. & Prof. Code § 4086 (proceedings may be brought "in the superior court in whose jurisdiction the dangerous drug or dangerous device is located"). Thus, when BioRx obtained its licenses and began shipping pharmaceutical products within this district, it consented to the jurisdiction of the courts within this district. This alone should lead to a finding of purposeful availment. BioRx also was required to appoint an agent for service of process in this State who is authorized to receive complaints related to BioRx's, and specifically NutriThrive's, violations of the state pharmacy regulations. Cal. Bus. & Prof. Code § 4112. Pursuant to this requirement, BioRx appointed an agent for service of process in Sacramento, California. (Durbin Decl., Ex. E.) Under the law of this Circuit, BioRx's appointment of a California agent for service of process is sufficient for a finding of personal jurisdiction. See Mahroom v. Best Western Int'l, Inc., 2007 U.S. Dist. LEXIS 56006 (N.D. Cal. 2007) (finding personal jurisdiction where defendant "regularly conducts business in California, and it even has a registered agent in California who is allowed to receive service of process.")
940766.2

13
OPPOSITION TO MOTION TO DISMISS OR TRANSFER

Case 3:08-cv-01493-JM-BLM

Document 30

Filed 07/28/2008

Page 22 of 36

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

Because BioRx has purposefully availed itself of the benefits and privileges of this State, the Court should find that there is at least specific jurisdiction over BioRx in this forum. b. BioRx has Purposefully Directed its Infringing Activities Towards California.

Not only has BioRx purposefully availed itself of the privileges of conducting business in California, but it has also purposefully directed its activities to California. The Supreme Court has held that due process permits the exercise of personal jurisdiction over a defendant who "purposefully directs" his activities at residents of a forum, even in the "absence of physical contacts" with the forum. Burger King, 471 U.S. at 476 (citing Keeton v. Hustler Magazine, Inc., 465 U.S. 770, 774-75 (1984) (finding purposeful direction where defendant published magazines in Ohio and circulated them in the forum state)); see also Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 899 (9th Cir. 2002) (finding purposeful direction where defendant distributed its pop music albums from Europe in the forum state); World-Wide Volkswagen, 444 U.S. at 297-98 (noting that a "forum State does not exceed its powers under the Due Process Clause if it asserts personal jurisdiction over a corporation that delivers its products into the stream of commerce with the expectation that they will be purchased by consumers in the forum State"); Plant Food Co-Op v. Wolfkill Feed & Fertilizer Corp., 633 F.2d 155, 158-60 (9th Cir. 1980) (relying on this language in World-Wide Volkswagen to hold that a Canadian fertilizer distributor that shipped defective or mislabeled fertilizer to Montana may properly be subject to personal jurisdiction there). Evidence of purposeful direction generally consists of action taking place outside the forum that is directed at the forum. Schwarzenegger v. Fred Martin Motor Co., 374 F.3d 797, 802 (9th Cir. 2004). This Circuit evaluates purposeful direction under the "Calder Effects test," in which specific jurisdiction exists even if the defendant has not purposefully availed itself of the benefits of this state as long as the defendant: (1) committed an intentional act, (2) expressly aimed at the forum state, (3) causing harm that the defendant knows is likely to be suffered in the forum state. Id. at 803 (citing Calder v. Jones, 465 U.S. 783, 79 L. Ed. 2d 804, 104 S. Ct. 1482 (1984).)
940766.2

14
OPPOSITION TO MOTION TO DISMISS OR TRANSFER

Case 3:08-cv-01493-JM-BLM

Document 30

Filed 07/28/2008

Page 23 of 36

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

(1)

BioRx's Intentionally Infringed Nutrishare's mark knowing Nutrishare is Located in California.

Under the law of this Circuit, even if BioRx had not sent a single infringing product into California, BioRx nevertheless purposefully directed its activities towards this State merely by intentionally infringing Nutrishare's mark with full knowledge of Nutrishare, its location, and its mark. See, e.g., Columbia Pictures Television v. Krypton Broadcasting of Birmingham, Inc., 106 F.3d 289 (9th Cir. 1997) ("[Plaintiff] alleged, and the district court found, that [defendant] willfully infringed copyrights owned by [plaintiff], which, as [defendant] knew, had its principal place of business in the Central District. This fact alone is sufficient to satisfy the `purposeful availment' requirement."); Panavision Intern., L.P. v. Toeppen, 141 F.3d 1316, 1321 (9th Cir. 1998) (holding that the effects test was satisfied in a trademark infringement case as defendant knew that plaintiff would suffer harm in California, since "its principal place of business was in California, and the heart of the theatrical motion picture and television industry is located there"); Nissan Motor Co., 2000 U.S. App. LEXIS 33937 at *2-3 ("Here, Nissan North America, a California resident, alleges that NCC intentionally infringed upon its trademark and that such harm was suffered primarily in its home forum. NCC claims there was no evidence it knew that Nissan North America was a California resident. But NCC admits that it received a certified letter from Nissan North America, which contained its California address, several years before it began advertising auto products on its webpage. And NCC does not purport to have relied on a belief that Nissan North America was a resident of a different forum. Accordingly, the district court correctly concluded that NCC expressly aimed its allegedly infringing activities at California"); IO Group, Inc. v. Pivotal, No. C 03-5286 MHP, 2004 U.S. Dist. LEXIS 6673, *18 (N.D. Cal. Apr. 19, 2004) (concluding, in a copyright infringement case, that plaintiff "has adequately demonstrated that defendants published images belonging to a California company, affecting an industry primarily centered in California, knowing that harm would likely be felt in that state"); Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 243 F.Supp.2d 1073, 1090 (C.D. Cal. 2003) ("Plaintiffs have alleged that Sharman intentionally and materially contributed to the infringement of Plaintiffs' works, and that it did so with full knowledge that much of the harm from this
940766.2

15
OPPOSITION TO MOTION TO DISMISS OR TRANSFER

Case 3:08-cv-01493-JM-BLM

Document 30

Filed 07/28/2008

Page 24 of 36

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

infringement would be suffered in California. This is sufficient to establish a prima facie case of purposeful availment under the effects test of Panavision"). (2) BioRx Shipped Infringing Products to California Residents.

BioRx also purposefully directed its activities to California by procuring California customers for its NutriThrive products and services, establishing relationships with California nursing agencies in connection with its NutriThrive products and services, shipping its "NutriThrive" orientation packet to prospective and actual NutriThrive customers in California, and shipping infringing NutriThrive products into California. (Rielly Decl., ¶¶ 12-13; Okamoto Decl., ¶¶ 6-13; Bundy Decl., ¶ 3-5.) Even if BioRx sold only one NutriThrive product or service within this State, there would be sufficient purposeful direction for a finding of specific jurisdiction. See, e.g., MCA Records, Inc. v. Charly Records, Ltd., 1997 U.S. App. LEXIS 3684, *8 (9th Cir. 1997) ("By advertising and selling allegedly infringing products in California, a party should reasonably expect to be haled into a California court to defend an infringement action."); George Kessel Int'l, Inc. v. Classic Wholesales, Inc., 2007 U.S. Dist. LEXIS 83261, *16 (D. Ariz. 2007) (finding specific jurisdiction because plaintiff marketed and sold its infringing products in forum state) (citing McGee v. Int'l Life Ins. Co., 355 U.S. 220, 223-24 (1957) (finding a single contract formed sufficient contacts for due process when contract had substantial connection to the forum state)). (3) BioRx Maintains an Interactive Web-site that Reaches Out to California Residents.

BioRx's "purposeful direction" also originates from BioRx's maintenance of an active web-site through which BioRx can, and in fact already has, procured NutriThrive customers. This Circuit is all-too-familiar with the long line of cases discussing the level of "interactivity" of a web-site. On the one hand, a passive web-site and a domain name, without anything else done "to encourage residents of the forum state" is insufficient for a finding of jurisdiction in this forum. Pebble Beach Co. v. Caddy, 453 F.3d 1151, 1156 (9th Cir. 2006) (no personal jurisdiction where web-site operator registered domain name and posted passive website without anything more); Cybersell, Inc. v. Cybersell, Inc., 130 F.3d 414, 418-20 (9th Cir.
940766.2

16
OPPOSITION TO MOTION TO DISMISS OR TRANSFER

Case 3:08-cv-01493-JM-BLM

Document 30

Filed 07/28/2008

Page 25 of 36

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

1997) (same); see also Bensusan Restaurant Corp., v. King, 937 F. Supp. 295, 297 (S.D.N.Y.1996) (no personal jurisdiction where defendant's web-site contained only general information and user had to call the number on the web-site to get further information.) On the other hand, interactive web-sites subject the web-site operator to specific jurisdiction in any forum where the web-site users can "exchange information with the host computer." Cybersell, Inc. v. Cybersell, Inc., 130 F.3d 414, 418 (9th Cir. 1997). Examples include web-sites that encourage residents of the forum state to contact them, procure customers through their web-site, develop mailing lists based on web-site solicitations, and directly target customers of the forum. See Panavision Int'l v. Toeppen, 141 F.3d 1316, 1322 (9th Cir. 1998); CompuServe, Inc. v. Patterson, 89 F.3d 1257, 1264- 66 (6th Cir.1996) (finding personal jurisdiction where web-site operator uploaded software on the web-site for residents in forum state to use, knowingly entering into a contract with forum state residents, and "deliberately and repeatedly" transmitted files to the forum state); Zippo Mfr. Co. v. Zippo Dot Com, Inc., 952 F. Supp. 1119, 1126 (W.D. Pa. 1997) (finding personal jurisdiction where defendant contracted with forum state residents and Internet Access Providers and "exchanges information" with forums state residents via its web-site.); Maritz, Inc. v. Cybergold, Inc., 947 F. Supp. 1328, 1333-34 (E.D.Mo.1996) (finding personal jurisdiction where defendant encouraged users to add their address to a mailing list that basically subscribed the user to defendant's service on the grounds that defendant's conduct amounted to "active solicitations" and "promotional activities" designed to "develop a mailing list of Internet users" and that the defendant "indiscriminately responded to every user" who accessed the site.); Inset Systems, Inc. v. Instruction Set, 937 F. Supp. 161, 165 (D. Conn. 1996) (finding personal jurisdiction where web-site was always accessible to forum state residents and defendant maintained a toll free number.); Heroes, Inc. v. Heroes Found., 958 F. Supp. 1 (D.D.C. 1996) (finding personal jurisdiction where web page solicited contributions, provided toll-free telephone number, and used the allegedly infringing trademark and logo); Blumenthal v. Drudge, 992 F. Supp. 44, 56 (D.D.C. 1998) (finding jurisdiction over defendant Matt Drudge because his web-site allows forum state residents to directly e-mail Drudge, thus permitting an "exchange of information with the host computer.")
940766.2

17
OPPOSITION TO MOTION TO DISMISS OR TRANSFER

Case 3:08-cv-01493-JM-BLM

Document 30

Filed 07/28/2008

Page 26 of 36

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

NutriThrive's web-site falls squarely within this Circuit's definition of an "interactive" web-site because it "permits users to exchange information with the host computer." Specifically, on the "Discussion Board" page, any user within California and the Eastern District can post messages or chat on-line with one of NutriThrive's "consumer advocates" ­ NutriThrive employees who are also consumers of its products and/or services. (Okamoto Decl., Ex. B.) This function is similar to the web-site in Blumenthal v. Drudge, 992 F. Supp. 44, 56 (D.D.C. 1988), which permitted users to contact the defendant on-line. Furthermore, on the "Referral" page, any user can sign up to become a "NutriThrive consumer" or refer a patient to become a "NutriThrive consumer." (Okamoto Decl., ¶ B.) Likewise, on BioRx's "Contact Us" page, any user within California and the Eastern District can request further information regarding BioRx's services. (Okamoto Decl., A.) These functions are like the web-site in Maritz, Inc., where users were encouraged to provide def