Amatech Group Limited v. Federal Card Services, LLC

UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF OHIO

WESTERN DIVISION

AMATECH GROUP LIMITED,

Plaintiff,

Case No. 1:21-cv-406

v. JUDGE DOUGLAS R. COLE

FEDERAL CARD SERVICES,

LLC, et al.,

Defendants.

OPINION & ORDER

This cause comes before the Court on Defendant Gerald Linden’s Motion to

Dismiss for Lack of Personal Jurisdiction and Insufficient Service of Process (Doc.

35).

Linden is a patent agent. For years, he has told the U.S. Patent and Trademark

Office (“USPTO”) that his business location for his patent-related activities is

Mayfield Heights, Ohio, which is where the PTO thus sent correspondence relating

to the patent applications that Linden prosecutes—including the applications at issue

in this action. Indeed, if one searches for Linden on the USPTO agent database, it

still lists him as “accepting new clients” at that address today. See Find A Patent

Practitioner, USPTO: OFFICE OF ENROLLMENT AND DISCIPLINE,

https://oedci.uspto.gov/OEDCI/practitionerSearchEntry (last visited Dec. 28, 2021).

In this action, AmaTech Group Limited (“AmaTech”) is suing Linden for claims

arising out of his actions as a patent agent. Yet, Linden maintains that this Court

lacks personal jurisdiction over him. According to Linden, he is a long-term resident

of Europe, which is where he actually does his work as a patent agent, and the Ohio

address is just a “mail drop.” Based on that, he contends that he lacks the

constitutionally-required minimum contacts with Ohio needed to give rise to

jurisdiction. For the reasons discussed below, the Court DENIES Linden’s Motion to

Dismiss (Doc. 35).

BACKGROUND

For purposes of a Rule 12(b)(2) motion to dismiss, the Court accepts as true the

factual allegations in the Complaint, and construes the affidavits relating

jurisdictional facts in a light most favorable to the plaintiff. Thus, the Court reports

those averments here, but with the disclaimer that these facts are not yet established,

and may never be.

Plaintiff AmaTech, an Irish corporation, develops technologies which it

incorporates into metal contactless-payment cards. (Compl., Doc. 1, #11, 4). This suit

stems from the alleged misappropriation of certain of those technologies—which

AmaTech contends are trade secrets—by Defendants David Finn and Federal Card

Services (“FCS”).

Finn was AmaTech’s CEO from 2005 until AmaTech was acquired by a new

parent company in 2018. (Id. at #1). After the acquisition, AmaTech briefly retained

Finn as a consultant, but Finn left to join FCS, an Ohio LLC and AmaTech

competitor, in July 2019. (Id.). AmaTech alleges that after his departure, Finn, with

the help of another AmaTech employee, began furnishing FCS with information

1 Refers to PAGEID #.

regarding AmaTech’s proprietary methods and procedures. (Id. at #1–2, 11). FCS

then began filing patent applications which, in AmaTech’s view, contained AmaTech’s

trade secrets. (See, e.g., id. at #20, 22).

That is where Defendant Gerald Linden comes into the picture. Linden is a

registered patent agent. According to AmaTech, FCS used Linden to prosecute these

offending patent applications. (See id. at #33). Linden’s involvement troubled

AmaTech, as Linden had acted as AmaTech’s patent “attorney” for nearly fourteen

years.2 In that capacity, Linden had filed and prosecuted nearly 100 patent

applications directed toward AmaTech’s metal card technologies at the USPTO. (Id.

at #13). Indeed, as recently as August 2019—after Finn had joined FCS—Linden had

executed an engagement letter with AmaTech for continued “legal services” to include

“preparing, filing[] and prosecuting US patent applications.” (Id. at #14).

AmaTech alleges that on the same day Linden executed the engagement letter

agreeing to provide these services to AmaTech, he also filed a provisional patent

application on behalf of FCS directed to “dual-interface metal smartcard technology.”

(Id.). Linden went on to file dozens of patent applications on behalf of “Finn and/or

FCS, all the while continuing to prosecute patent applications on AmaTech’s behalf.”

(Id.). Some of these applications, though not all, incorporated what AmaTech believes

to be trade secret information. (See id. at #20).

2 The Court puts “attorney” in quotes because it appears that, although AmaTech at one time

believed Linden to be an attorney (AmaTech alleges that is because Linden said he was an

attorney), AmaTech later learned (as further described below) that, at the time he was

prosecuting the AmaTech patent applications relating to this suit, Linden had retired his law

license. (See Compl., Doc. 1, #35–36).

AmaTech alleges that Linden knew or should have known, given his extensive

work with AmaTech over the years, that some of the applications filed on behalf of

Finn or FCS contained AmaTech’s confidential information. (Id. at #33–34). It even

alleges that some of the applications filed by Linden on behalf of FCS “disparage[]”

and distinguish “AmaTech’s prior patent applications, which [Linden] also prepared,”

leaving him “with the unethical task of arguing for the patentability of FCS’[s] claims

over AmaTech’s prior publication.” (Id. at #34–35).

In the course of its investigation into this activity, AmaTech also learned that

Linden had not been a duly licensed attorney since 2006, despite having held himself

out to AmaTech as such. (Id. at #35).3 Although his website suggests that he is

admitted to practice in Pennsylvania and Connecticut, AmaTech alleges he retired

from the practice of law in those states in 1994 and 2006, respectively. (Id. at #35–

36). Nor is Linden admitted to practice in Florida, which he identified as his state of

residence in his engagement letter with AmaTech. (Id. at #36).

Based on these allegations, AmaTech asserts a number of claims against

Linden, FCS, and Finn. Most salient for purposes of this Opinion, however, are those

claims against Linden: breach of contract, breach of fiduciary duty, and fraud. (Id. at

#46–51).

3 A person need not be an attorney to prosecute a patent application on behalf of a client at

the USPTO. Rather, registered patent agents can also undertake such activities. At least as

of October 7, 2021, the USPTO website listed Linden as an “Attorney,” although his status

has since been updated to read “Agent.” (Compare Khariton Decl., Attach. A, Doc. 38-1,

#1562, with Find A Patent Practitioner, USPTO: OFFICE OF ENROLLMENT AND DISCIPLINE,

https://oedci.uspto.gov/OEDCI/practitionerSearchEntry (last visited Dec. 28, 2021) (search

“Linden” in “Last name” field)).

As to those claims, AmaTech asserts that the Court has personal jurisdiction

over Linden because Linden:

purposefully entered into a contract with FCS to provide FCS with legal

services and representation, knowing FCS to be a resident of this

District. On information and belief, in the course of his representation

of FCS, Mr. Linden has made a number of purposeful contacts with the

State of Ohio and this District, including communicating with FCS by

mail, email, and/or telephone; negotiating the terms of his

representation; advising FCS about the status and progress of FCS’[s]

patent filings before the USPTO; requesting and receiving authorization

from FCS for various actions; demanding and receiving payment from

FCS; and instructing the USPTO to deliver correspondence concerning

FCS’[s] patent filings to an address in the State of Ohio, care of D.A.

Stauffer Patent Services LLC, a provider of legal services with offices in

Cleveland, Ohio. AmaTech’s claims against Mr. Linden arise, in whole

or in part, from his representation of FCS, a resident of this District,

which he undertook concurrently with his representation of, and in

breach of his obligations to, AmaTech.

(Id. at #5–6).

Linden filed the instant Motion challenging jurisdiction and service on

September 9, 2021 (Mot. to Dismiss for Lack of Personal Jurisdiction and Insufficient

Service of Process (“Mot.”), Doc. 35). AmaTech responded in opposition on October 7

(“Resp.,” Doc. 38), and Linden replied in support on October 21 (“Reply,” Doc. 41). The

matter is now ripe.

LEGAL STANDARD

Faced with a motion to dismiss for lack of jurisdiction under Fed. R. Civ. P.

12(b)(2), a court has three options: it (1) “may determine the motion on the basis of

affidavits alone”; (2) “permit discovery in aid of the motion”; or (3) “conduct an

evidentiary hearing on the merits of the motion.” Malone v. Stanley Black & Decker,

Inc., 965 F.3d 499, 505 (6th Cir. 2020) (quoting Serras v. First Tenn. Bank Nat. Ass’n,

875 F.2d 1212, 1214 (6th Cir. 1989)). If the Court decides the motion on the pleadings

and affidavits alone, a plaintiff need only make a prima facie showing of personal

jurisdiction. Id. (quoting Schneider v. Hardesty, 669 F.3d 693, 697 (6th Cir. 2012)). In

evaluating whether the plaintiff has met this “relatively slight” burden, the court

“must consider the pleadings and affidavits in the light most favorable to the

plaintiff.” Am. Greetings Corp. v. Cohn, 839 F.2d 1164, 1169 (6th Cir. 1988) (quoting

Welsh v. Gibbs, 631 F.2d 436, 439 (6th Cir. 1980)). And the court “does not weigh the

controverting assertions of the party seeking dismissal,” so as to “prevent non-

resident defendants from regularly avoiding personal jurisdiction simply by filing an

affidavit denying all jurisdictional facts.” Theunissen v. Matthews, 935 F.2d 1454,

1459 (6th Cir. 1991) (citing Serras, 875 F.2d at 1214).

Here, the Court is deciding the motion without conducting an evidentiary

hearing or permitting jurisdictional discovery—the parties requested neither—and

therefore considers the pleadings and affidavits in a light most favorable to AmaTech.

Thus, consistent with the authority above, insofar as the parties aver conflicting

accounts of the salient facts, the Court resolves those conflicts in AmaTech’s favor.

(That being said, the Court notes that there is remarkably little disagreement as to

those facts here.) And with that version of the facts in mind, “[d]ismissal in this

procedural posture is proper only if all the specific facts which the plaintiff ... alleges

collectively fail to state a prima facie case for jurisdiction.” Kerry Steel, Inc. v. Paragon

Indus., 106 F.3d 147, 149 (6th Cir. 1997) (quoting Theunissen, 935 F.2d at 1458).

LAW AND ANALYIS

A. Personal Jurisdiction, Generally.

Personal jurisdiction comes in two flavors: general and specific. A forum may

exercise “general jurisdiction” over a non-resident defendant whose contacts with the

forum state are so “‘continuous and systematic’ as to render [the defendant]

essentially at home” there. Goodyear Dunlop Tires Operations, S.A. v. Brown, 564

U.S. 915, 919 (2011) (quoting Int’l Shoe Co. v. Washington, 326 U.S. 310, 316 (1945)).4

“Specific jurisdiction,” on the other hand, applies when a defendant’s contacts with

the forum state are fewer or less intimate, but where the legal action “arise[s] out of

or relate[s] to” those contacts. Ford Motor Co. v. Montana Eighth Jud. Dist. Ct., 141

S. Ct. 1017, 1025 (2021) (quoting Bristol-Myers Squibb Co. v. Superior Ct. of

California, San Francisco Cty., 137 S. Ct. 1773, 1780 (2017)). This case involves the

latter form of personal jurisdiction.

The Court has subject matter jurisdiction over this action based on federal

question jurisdiction as to one of the counts (although not a count asserted against

Linden), see 28 U.S.C. § 1331, combined with supplemental jurisdiction over the

attendant state law claims (including those counts asserted against Linden), see 28

U.S.C. § 1367. When a federal question provides the basis for subject matter

4 Although the “paradigm forum for the exercise of general jurisdiction” over an individual

defendant is the defendant’s domicile, Goodyear, 564 U.S. at 924, a court may nonetheless

exercise general jurisdiction over a non-resident individual where the defendant’s contacts

with the forum are continuous and systematic. See Holt Oil & Gas Corp. v. Harvey, 801 F.2d

773, 779 (5th Cir. 1986) (holding “constant and extensive personal and business connections

with Texas throughout [the defendant’s] adult life” supported exercise of general personal

jurisdiction over Oklahoma resident). The precise contours of general jurisdiction over

individuals matters little here, however, because, as explained further below, this case does

not turn on an exercise of general jurisdiction.

jurisdiction, a federal court may exercise personal jurisdiction over a defendant “if

the defendant is amenable to service of process under the [forum] state’s long-arm

statute and if the exercise of personal jurisdiction would not deny the defendant[] due

process.” Bird v. Parsons, 289 F.3d 865, 871 (6th Cir. 2002) (quoting Michigan Coal.

of Radioactive Material Users, Inc. v. Griepentrog, 954 F.2d 1174, 1176 (6th Cir. 1992)

(internal citations omitted)). Accordingly, the Court starts its analysis with Ohio’s

long-arm statute, Ohio Rev. Code § 2307.382, and then turns to the Due Process

Clause.

1. Exercising Personal Jurisdiction Over Linden Is Consistent

With Ohio’s Long-Arm Statute.

Before April 7, 2021, Ohio’s long-arm statute consisted of a list of enumerated

acts set forth in § 2307.382(A), followed by an admonition in § 2307.382(C) that

“[w]hen jurisdiction over a person is based solely upon this section, only a cause of

action arising from acts enumerated in this section may be asserted against him.”

Ohio Rev. Code Ann. § 2307.382 (West 2019). Not surprisingly, given the statute’s

plain language, courts routinely noted that Ohio’s long-arm statute did not extend

jurisdiction to the fullest extent that the Due Process Clause allows. See, e.g.,

Schneider, 669 F.3d at 699 (quoting Estate of Thomson ex rel. Estate of Rakestraw v.

Toyota Motor Corp. Worldwide, 545 F.3d 357, 361 (6th Cir. 2008)); Hoover Co. v.

Robeson Indus. Corp., 904 F. Supp. 671, 673 (N.D. Ohio 1995) (“It has since become

clear that Ohio state courts do not interpret Ohio Rev. Code § 2307.382(A) to extend

personal jurisdiction to the limits of due process.” (citing Goldstein v. Christiansen,

638 N.E.2d 541, 546 (Ohio 1994))). Indeed, Ohio’s Supreme Court expressly noted

that the long-arm statute reflected a “two-part analysis,” which obligated a court to

“(1) determine whether the state’s ‘long-arm’ statute and the applicable Civil Rule

confer[ed] personal jurisdiction, and if so, (2) whether granting jurisdiction under the

statute and rule would deprive the defendant of the right to due process of law

pursuant to the Fourteenth Amendment to the United States Constitution.”

Goldstein, 638 N.E.2d at 543, 545 n.1 (citing U.S. Sprint Commc’ns Co., Ltd. P’ship

v. Mr. K’s Foods, Inc., 624 N.E.2d 1048, 1051 (Ohio 1994)). According to that court,

merging these inquiries (i.e., treating the long-arm statute as coterminous with the

Due Process Clause) would render the first “nugatory.” Id. at 545 n.1.

Recent events, however, call this understanding of Ohio’s long-arm jurisdiction

into question. The Ohio General Assembly has amended Ohio’s long-arm statute,

effective as of April 7, 2021. See Am. H.B. 272, 133d Gen. Assemb. (Ohio 2020); Am.

Sub. S.B. 10, 133d Gen. Assemb. (Ohio 2020). Because Amatech filed this action on

June 14, 2021, (Compl., Doc. 1, #58), the Court must consider the effect of the

amendment on the exercise of jurisdiction here. See Smith v. Swaffer, No. 1:20-CV-

1848, 2021 WL 4596922, at *10 (N.D. Ohio Oct. 7, 2021) (“Jurisdiction is determined

as of the commencement of the action.” (citing Mollan v. Torrance, 22 U.S. (9 Wheat.)

537, 539–40 (1824))). As amended, subsection (C)—which previously limited

jurisdiction to “cause[s] of action arising from acts enumerated in” subsection (A)—

now provides that, “[i]n addition to a court’s exercise of personal jurisdiction under

subsection (A) of this section, a court may exercise personal jurisdiction over a person

on any basis consistent with the Ohio Constitution and the United States

Constitution.” Ohio Rev. Code § 2307.382(C).

Neither the Supreme Court of Ohio nor any Ohio appellate courts have yet had

occasion to interpret this new language. Several federal district courts, though, have

done so, falling into one of two camps. Most of the courts to address the amended

language have concluded that Ohio’s long-arm statute now extends personal

jurisdiction to the fullest extent that the U.S. Constitution permits. See C.T. v. Red

Roof Inns, Inc., No. 2:19-CV-5384, 2021 WL 2942483, at *10 (S.D. Ohio July 1, 2021)

(“Thus, even if the TVPRA does not confer nationwide service of process, this Court

could still exercise jurisdiction over a suit if it comported with Ohio’s long-arm statute

and the U.S. Constitution, which are now coextensive.”); Swaffer, 2021 WL 4596922,

at *10 (“In April 2021, the Ohio General Assembly extended the State’s long-arm

statute to the limits of the Constitution.”); NOCO Co. v. Shenzhen Valuelink E-Com.

Co., No. 1:20 CV 49, 2021 WL 4699088, at *2 (N.D. Ohio July 22, 2021) (“Ohio recently

amended its long-arm statute … to mirror the constitutional limitations for personal

jurisdiction ….”). If that is correct, of course, the “two-part analysis,” see Goldstein,

638 N.E.2d at 545 n.1, is now a one-part analysis, and the Court need only inquire

whether the exercise of personal jurisdiction comports with the limits of the Due

Process Clause.

On the other hand, at least one court in this district has concluded that the

purpose of the new language in § 2307.382(C) is merely to allow for “general

jurisdiction” over non-resident defendants in appropriate circumstances. Premier

Prop. Sales Ltd. v. Gospel Ministries Int’l, Inc., No. 3:21-CV-14, 2021 WL 1964613, at

*2 n.2 (S.D. Ohio May 17, 2021). According to that court, in cases where, as here, a

party is asserting some form of specific jurisdiction, the party must still show that

the suit arises from one of the enumerated acts in subsection (A). Id. (“This

interpretation does not, however, collapse the long-arm statute’s specific jurisdiction

test into the Federal standard. Plaintiffs … asserting that a court has specific

jurisdiction over a defendant must still demonstrate their claim arose from one of the

enumerated factors.”).5 In other words, the new amendments to subsection (C) only

come into play if the party is instead asserting general jurisdiction.

For present purposes, the Court need not decide which view regarding the

amendments to subsection (C) is correct. That is because one of the enumerated

categories listed in subsection (A) is “a cause of action arising from the person’s …

transacting business in this state,” whether “directly or by an agent.” Ohio Rev. Code

§ 2307.382(A)(1). As an Ohio appellate court has explained, “[t]o ‘transact’ under

[Ohio Rev. Code §] 2307.382(A)(1) means ‘to prosecute negotiations; to carry on

business; to have dealings.’” ATA Logistics, Inc. v. Empire Container Freight Station,

5 Although there exists some inconsistency in federal court opinions on the subject, the Sixth

Circuit had repeatedly recognized that, prior to amendment of the long-arm statute, Ohio did

not recognize a “general” personal jurisdiction over non-residents. See Conn v. Zakharov, 667

F.3d 705, 717 n.6 (6th Cir. 2012) (noting inconsistency in this respect but stating that the

“pro-general jurisdiction” cases rested on questionable ground). Post-amendment, it seems

likely that Ohio courts would recognize such a general personal jurisdiction. See Premier

Premier Prop. Sales Ltd., 2021 WL 1964613, at *2 n.2 (“The Ohio legislature recently revised

the state’s long-arm statute to permit general jurisdiction over non-resident defendants

where it was not recognized before.”). For purposes of this opinion, the Court need not decide

the propriety of exercising “general” personal jurisdiction, because both parties center their

arguments on specific jurisdiction, and in any case the record would not support such an

exercise.

Inc., No. CA2020-01-006, 2020 WL 4932794, at *3 (Ohio Ct. App. Aug. 24, 2020)

(quoting Dahlhausen v. Aldred, 932 N.E.2d 949, 954 (Ohio Ct. App. 2010)). One

“factor relevant to transacting business is whether the parties conducted their

negotiations and communications in Ohio.” MJM Holdings Inc. v. Sims, 130 N.E.3d

1093, 1099 (Ohio Ct. App. 2019) (citing Barnabus Consulting Ltd. v. Riverside Health

Sys., Inc., No. 07AP–1014, 2008 WL 2588579, at *3 (Ohio Ct. App. June 30, 2008).

Here, Linden has “transacted business” in Ohio through his activities in connection

with prosecuting patent applications here. In particular, he has provided the USPTO

with an Ohio address as the location where that office should “negotiat[e] and

communicat[e]” with him, see MJM Holdings, 130 N.E.3d at 1099, regarding such

applications. And the USPTO has done so. That suffices.

Linden makes two arguments to the contrary. First, he says it is not him who

is transacting business here, but merely a colleague who acts as a mail drop and

forwards information to him. (See Mot., Doc. 35, #1516, 1524). But that person is

acting as Lindner’s agent for purposes of handling Linden’s communications from the

USPTO, and an agent’s activities suffice for purposes of satisfying the enumerated

categories in the long-arm statute. See Ohio Rev. Code § 2307.382(A) (conferring

personal jurisdiction “over a person who acts directly or by an agent”) (emphasis

added). Second, Linden claims that he never sent the USPTO anything from Ohio,

but rather just received information and requests from the USPTO. (See Mot., Doc.

35, #1516, 1524). But that distinction does not cut it in the Court’s view. Linden may

have electronically filed his materials with the USPTO, but he was doing so in

response to the information that the USPTO sent to him in Ohio (and, it bears

remembering, the USPTO sent it to him there at his request). Thus, Linden was

engaging in patent prosecution activities by way of his Ohio address, even if he was

not personally doing anything in the state.

And there is little question that the causes of action here “aris[e] from” his

patent prosecution activities. See Ohio Rev. Code § 2307.382(A). AmaTech alleges

that at the same time Linden was prosecuting patents (using an Ohio address) on

AmaTech’s behalf, he was also prosecuting patents (using the same Ohio address) on

FCS’s behalf, and that this constituted an impermissible conflict of interest in

violation of duties that he owed AmaTech. (Resp., Doc. 38, #1547–48). To be sure,

AmaTech’s allegations may prove false, but there seems little question that the

claims arise from Linden’s Ohio-associated patent-prosecution activities.

In short, the Court concludes that Linden’s use of an Ohio address to

communicate with the USPTO constitutes “transacting business” in the State of Ohio

as to those activities, and further concludes that the claims at issue here “arise from”

those activities. Thus, AmaTech has met the “relatively slight” burden, Am. Greetings

Corp., 839 F.2d at 1169, needed to make a prima facie showing that Linden is subject

to jurisdiction under the Ohio long-arm statute, which Linden has failed to rebut.

2. AmaTech Has Established That Exercising Personal

Jurisdiction Over Linden Comports With Due Process.

Of course, it is not enough that Linden’s activities in the State bring him within

the contours of Ohio’s long-arm statute. AmaTech also must show that the Court’s

exercise of jurisdiction over Linden would comport with the Due Process Clause. But

the Court concludes that AmaTech has made the necessary showing on this front, as

well.

“When determining whether a district court’s exercise of personal jurisdiction

would offend due process, ‘[t]he relevant inquiry is whether … the non-resident

defendant possesses such minimum contacts with the forum state that the exercise

of jurisdiction would comport with traditional notions of fair play and substantial

justice.’” Beydoun v. Wataniya Rests. Holding, Q.S.C., 768 F.3d 499, 505 (6th Cir.

2014) (quoting Theunissen, 935 F.2d at 1459). As the Supreme Court recently

reiterated, “a strong ‘relationship among the defendant, the forum, and the

litigation’” is the “‘essential foundation’ of specific jurisdiction.” Ford Motor Co., 141

S. Ct. at 1021 (quoting Helicopteros Nacionales de Colombia, S.A. v. Hall, 466 U.S.

408, 414 (1984)). The Sixth Circuit outlined a three-pronged test to guide the due

process inquiry in Southern Machine Co. v. Mohasco Industries, Inc.:

First, the defendant must purposefully avail himself of the privilege of

acting in the forum state or causing a consequence in the forum state.

Second, the cause of action must arise from the defendant’s activities

there. Finally, the acts of the defendant or consequences caused by the

defendant must have a substantial enough connection with the forum

state to make the exercise of jurisdiction over the defendant reasonable.

401 F.2d 374, 381 (6th Cir. 1968). The Court addresses each of these three prongs in

succession.

a. Linden Has Purposefully Availed Himself Of The Privilege

Of Acting In Ohio.

The first prong of the test is the “sine qua non for in personam jurisdiction.” Id.

at 381–82. It asks whether the defendant has “purposefully avail[ed] [himself] of the

privilege of conducting activities within the forum State, thus invoking the benefits

and protections of its laws.” Burger King Corp. v. Rudzewicz, 471 U.S. 462, 475 (1985)

(quoting Hanson v. Denckla, 357 U.S. 235, 253 (1958)). This requirement “ensures

that a defendant will not be haled into a jurisdiction solely as a result of ‘random,’

‘fortuitous,’ or ‘attenuated’ contacts, or of the ‘unilateral activity of another party or

a third person.’” Id. (internal citations omitted). Importantly, the Sixth Circuit has

found that the “purposeful availment” prong of the constitutional due process inquiry

is coextensive with the “transacting business” standard of Ohio’s long-arm statute.

Burnshire Dev., LLC v. Cliffs Reduced Iron Corp., 198 F. App’x 425, 432 (6th Cir.

2006).

Here, AmaTech alleges Linden purposefully availed himself of the benefits and

protections of Ohio law by: (1) entering a contract with FCS, an Ohio LLC;

(2) preparing and filing several dozen patent applications on FCS’s behalf;

(3) contacting FCS regarding patent filings and payment; (4) holding himself out to

the USPTO as having an Ohio address; and (5) using that address (and a patent agent

there) to facilitate his patent prosecution business. (See Compl., Doc. 1, #5–6). As

already noted above, the Court agrees with AmaTech that, at least with regard to the

last two items on that list, those activities satisfy the statutory test for “transacting

business” in Ohio. Thus, under Sixth Circuit precedent, see Burnshire, 198 F. App’x

at 432, they likewise satisfy the “purposeful availment” prong of the constitutional

due process test.

Linden argues that, to the contrary, his contacts with Ohio—or, as he might

prefer to frame them, with FCS—are just the sort of “random, fortuitous” contacts

that fail to evince purposeful availment. In support of that position, Linden relies on

Calphalon Corporation v. Rowlette, 228 F.3d 718 (6th Cir. 2000), for the proposition

that “the mere existence of a contract between Linden and FCS [is] not [] enough to

confer personal jurisdiction” over him. (Mot., Doc. 35, #1517). Linden’s statement of

law is obviously correct. See Burger King, 471 U.S. at 478 (holding that a “contract

with an out-of-state party alone” does not “automatically establish sufficient

minimum contacts”). And, admittedly, Calphalon lends some support to the notion

that Linden’s contacts with FCS (as alleged) would not meet the requirements of due

process. In that case, the Sixth Circuit held that the plaintiff had failed to show the

defendant purposefully availed himself of Ohio despite the defendant’s: distributor

agreement with an Ohio choice of law provision, duties to report market conditions to

the plaintiff in Ohio, somewhat regular telephone and fax contacts with the plaintiff,

two visits to plaintiff’s offices in Ohio, and the defendant’s sending a letter

threatening litigation to Ohio. Calphalon, 228 F.3d at 722–23.

In light of Calphalon, AmaTech’s limited allegations regarding Linden’s

relationship with FCS perhaps present a close question whether Linden purposefully

availed himself of the forum. As this Court has previously observed, “to create

personal jurisdiction, out-of-state defendants must purposefully avail themselves of

… the forum state. If instead they are choosing to direct their activities toward a

particular person, and that person merely happens to live in the forum state, that is

not enough.” Baker v. Bensalz Prods., Inc., No. 1:18-CV-757, 2020 WL 1083606 at *9

(S.D. Ohio Mar. 6, 2020), on reconsideration, 478 F. Supp. 3d 618 (S.D. Ohio 2020).

But, while there are some similarities between this case and Calphalon

regarding the nature of the Linden-FCS relationship, Linden’s focus on that

relationship ignores an important distinction between Calphalon and this case.

Namely, here AmaTech alleges that Linden maintains an address in Ohio that he

uses to conduct his patent prosecution business generally. Moreover, this address is

registered with the USPTO and publicly searchable on the USPTO website. And on

that front, Linden does not contest that he uses such an address, nor that it is so

registered with the USPTO (and he cannot, given that the information is, as of this

writing, still available on the USPTO’s website). Rather, he says since 2010 he has

used the Ohio address of an “acquaintance,” Dwight Stauffer, “as a mail drop to

receive very occasional mail from” the USPTO. (Linden Decl., Doc. 35, #1524). This

“very occasional mail” from the USPTO includes final patent documents, which

Stauffer forwards directly to clients. (Id.). And, when the USPTO sends reminders

for Linden, Stauffer forwards those via email to Linden. (Id.).

Despite Linden’s efforts to downplay the significance of this Ohio “mail drop”

for jurisdictional purposes, the Court is not convinced. If anything, his description

strengthens the inference that he is using the Ohio address as a facet of his patent-

prosecution business. For example, Linden confirms that Stauffer (acting in Ohio) is

facilitating Linden’s patent work by forwarding correspondence to clients and to

Linden, on Linden’s behalf. Indeed, as to that latter point, construing the Complaint

most favorably to AmaTech (as the Court must), the Complaint appears to allege an

agency relationship between Stauffer and Linden. Because the actions of an agent

are attributable to the principal for purposes of the purposeful availment prong, see

Chattanooga Corp. v. Klingler, 704 F.2d 903, 907 (6th Cir. 1983), Stauffer’s Ohio-

based patent prosecution activities are attributable to Linden, despite Linden’s

physical absence.

In sum, AmaTech need not rely on the alleged contract with FCS to establish

Linden’s purposeful availment, and thus Linden’s citation to Calphalon cannot carry

his Motion. And Linden’s other contacts with Ohio are not “random, fortuitous, or

attenuated.” He has, by his own admission, used an Ohio address to facilitate patent

prosecution activities for approximately eleven years. He has listed that address in a

publicly searchable database and represented to a federal agency that it could reach

him there (and that he was “accepting new clients” through that address). The

duration and nature of this contact made it reasonably foreseeable (whether Linden

in fact foresaw it or not) that Linden could be haled into an Ohio court based on his

patent-related activities. As such, this prong is satisfied.

b. AmaTech’s Claims Against Linden “Arise From” Linden’s

Ohio Contacts.

Classically, the second prong of the Southern Machine test asks whether the

cause of action asserted “arise[s] from the defendant’s activities” in the forum state.

Southern Machine, 401 F.2d at 381. However, the Sixth Circuit has articulated the

standard “in a number of different ways, such as whether the causes of action were

‘made possible by’ or ‘lie in the wake of’ the defendant’s contacts, or whether the

causes of action are ‘related to’ or ‘connected with’” those contacts. Air Products, 503

F.3d at 553 (citations omitted). Whatever the formulation, this “arising from” test is

a “lenient standard.” Id. (citing Bird, 289 F.3d at 875).

Given the Court’s conclusion regarding Ohio’s long-arm statute, it should come

as no surprise that the Court also finds AmaTech’s claims “arise from” Linden’s Ohio-

based activities from a due process perspective.6 Here, AmaTech asserts against

Linden breach of contract, breach of fiduciary duty, and fraud. The Court evaluates

these claims separately. See Round Rock Rsch. LLC v. ASUSTeK Computer Inc., 967

F. Supp. 2d 969, 974 (D. Del. 2013) (“[P]ersonal jurisdiction is evaluated on a claim-

by-claim basis.” (citing Marten v. Godwin, 499 F.3d 290, 296 (3d Cir. 2007))).

Start with the breach of contract. It is useful to precisely recount AmaTech’s

breach of contract allegations. In its Complaint, AmaTech asserts that Linden’s

breaches consisted of:

preparing and filing one or more patent applications on [FCS and Mr.

Finn’s] behalf containing information that Mr. Linden knew or should

have known constituted AmaTech’s confidential trade secret

information and his failing to advise AmaTech of this

misappropriation[;] … preparing and filing one or more patent

applications on their behalf disparaging AmaTech’s patent applications,

6 The Sixth Circuit suggested in Brunner v. Hampson, 441 F.3d 457, 466–67 (6th Cir. 2006),

and cited approvingly in Burnshire, 198 F. App’x at 430, the notion that this prong of the due

process inquiry requires only a “but-for” relationship, while Ohio’s long-arm statute requires

a more restrictive proximate cause relationship. The court in Burnshire, having concluded

that the contacts in that case satisfied Ohio’s long-arm statute, thus found it unnecessary to

conduct the parallel due process analysis. Id. at 432 n.2. However, the Sixth Circuit appears

to have since walked back its broad view of “arising from,” concluding in Beydoun, 768 F.3d

at 507–08, that “more than mere but-for causation is required to support a finding of personal

jurisdiction. To the contrary, the plaintiff’s cause of action must be proximately caused by

the defendant’s contacts with the forum state.” In any case, this causal relationship as a

constitutional requirement is certainly no more restrictive than that required by Ohio’s long-

arm statute.

which Mr. Linden previously prepared, filed, and prosecuted on

AmaTech’s behalf in the course of his representation of AmaTech[;] …

[and] filing one or more patent applications on their behalf with claims

directed to the same subject matter, or obvious variations thereof, as

that taught in AmaTech’s prior patent applications, which Mr. Linden

also previously prepared, filed, and prosecuted on AmaTech’s behalf in

the course of his representation of AmaTech.

(Compl., Doc. 1, #46–47).

To be sure, the case at hand presents a somewhat unusual situation from a

jurisdictional perspective, in that AmaTech, the party with whom Linden entered the

contract-in-suit, is not an Ohio resident. That is, where a defendant purposefully

avails itself of the forum state by reaching out and creating a continuing contractual

obligation to a forum-resident plaintiff—as is true in most contract-based personal

jurisdiction cases—a breach of that obligation (the contract) “naturally arises from

the defendant’s activities” in the state. Tharo Systems, Inc., 196 F. App’x at 371 (citing

Cole v. Mileti, 133 F.3d 433, 436 (6th Cir. 1998)); In-Flight Devices Corp. v. Van Dusen

Air, Inc., 466 F.2d 220, 229 (6th Cir. 1972) (“Defendant’s … entering of a contractual

relationship with an Ohio corporation [] is necessarily the very soil from which the

action for breach grew. The intimate relationship between the jurisdictional basis and

the cause of action … cannot be denied here.”).

That is not the situation here. Rather, the action for breach here “grew” out of

a contract between AmaTech and Linden, the formation of which has little or no

connection to Ohio. Linden seizes on this distinction, emphasizing that the contract

AmaTech asserts was negotiated, executed, and signed in Europe, and that neither

party to it resides in Ohio. But the plaintiff’s residency is “not a separate

requirement, and lack of residence [in the forum] will not defeat jurisdiction

established on the basis of defendant’s contacts.” Keeton v. Hustler Mag., Inc., 465

U.S. 770, 780 (1984). And while creation of the contract is, of course, absolutely

necessary to AmaTech’s cause of action, so too is the conduct that allegedly breached

that contract; one cannot pursue a breach of contract claim without alleging a breach.

See Agency Rent A Car Sys., Inc. v. Grand Rent A Car Corp., 98 F.3d 25, 31 (2d Cir.

1996) (“Two elements give rise to a breach of contract claim: (i) a contract between

the parties and (ii) an act allegedly in violation of that agreement. Both are necessary

elements of the claim; neither is sufficient by itself.”).

Regarding that latter point, as AmaTech observes, although the central

contractual relationship bears no relationship to Ohio, “much of the breaching

conduct occurred in Ohio.” (Resp., Doc. 38, #1553). This includes, according to

AmaTech, Linden’s representation of FCS, dealings with FCS’s personnel in Ohio,

and use of an Ohio address and patent agent to conduct the “conflicting

representation before the USPTO.” (Id. at #1548).

Again, while Linden’s contacts with FCS may not have carried the day for

AmaTech, it is the latter contact that dooms Linden’s motion. AmaTech’s claim for

breach centers on Linden’s patent prosecution business, and Linden’s mailing

address in Ohio is integral to that business. For eleven years, he has directed the

USPTO to mail correspondence, including at least final printed patents and

“reminders” (reminders, one must presume, to act on prosecution-related deadlines)

to this address. (Linden Decl., Doc. 35, #1524). This correspondence is forwarded to

appropriate recipients, including clients and Linden himself, by another patent

agent.

Linden also argues that these claims do not arise from his Ohio contacts

because AmaTech suffered no damage in Ohio. However, it is not necessary that the

breach have caused injury in Ohio to satisfy the constitutional requirements for

personal jurisdiction. Bulso v. O’Shea, 730 F. App’x 347, 351 (6th Cir. 2018). Rather,

[t]he personal-jurisdiction analysis … hinges on whether the defendant[’s] conduct

connects them to [the forum], not on where [plaintiff] experienced those

consequences.” Id. (citing Walden v. Fiore, 571 U.S. 277, 290 (2014)). That AmaTech

felt the consequence of Linden’s breach in Ireland does not convince the Court that

the claim for breach did not arise from actions that are Ohio-related.

For these reasons, the Court finds that AmaTech’s breach of contract claims

arise from Linden’s Ohio contacts—the same contacts by which he purposefully

availed himself of the benefits and protections of Ohio law. And Linden seems to

concede that, if personal jurisdiction is appropriate as to the breach of contract claim,

that same result would apply to AmaTech’s remaining claims for breach of fiduciary

duty and fraud. (Reply, Doc. 41, #1622 (“Plaintiff’s breach of fiduciary duty claim

arises from the same contractual arrangement and the fraud claim likewise relates

to representations in that letter.”)).

Even had he not made that concession, the Court concludes that personal

jurisdiction over these claims would be proper. The Court agrees that the breach of

fiduciary duty is premised on obligations (and violations) of the AmaTech-Linden

relationship, and AmaTech alleges much of the same conduct with respect to the

breach of fiduciary duty claim as it does for its breach of contract claim. (i.e., filing

patent applications on behalf of Finn and FCS and failing to disclose the alleged

misappropriation). (See Compl., Doc. 1, #49). This allegedly tortious conduct occurred

in Ohio, see Ohio Rev. Code § 2307.382(A)(3), via Linden’s Ohio-based patent-

prosecution activities.

The fraud claim presents a slightly closer case. AmaTech alleges in that count

that Linden practiced fraud on AmaTech by failing to disclose that he was not a duly

licensed attorney for much of the time he represented AmaTech. AmaTech fails to

allege that Linden’s omission of his licensure status occurred in Ohio or damaged any

party in Ohio, and the relation of this omission to Linden’s Ohio-based prosecution

activities is somewhat more tenuous than in the other two claims. Rather, it appears

that Linden made the “representation” regarding his licensure status on his website.

(Compl., Doc. 1, #35). But, again, Linden has failed to make any explicit argument

opposing the exercise of jurisdiction with respect to this claim, and the Court

considers any such argument waived.

c. It Would Be Reasonable To Subject Linden To Personal

Jurisdiction In Ohio.

The Court now turns to the third Southern Machine prong. See LAK, Inc., 885

F.2d at 1303 (“[E]ach [Southern Machine] criterion represents an independent

requirement, and failure to meet any one of the three means that personal

jurisdiction may not be invoked.”). This prong requires that the defendant have a

substantial enough connection with the forum state to make the exercise of

jurisdiction over the defendant “reasonable.” See Southern Mach. Co., 401 F.2d at

381. But in making that determination, the Court starts with a presumption.

According to the Sixth Circuit, where the first two prongs of the Southern Machine

inquiry are met, “an inference arises that the third, fairness, is also present; only the

unusual case will not meet this third criterion.” First Nat. Bank of Louisville v. J.W.

Brewer Tire Co., 680 F.2d 1123, 1126 (6th Cir. 1982) (citing Southern Machine Co.,

401 F.2d at 384). In the Court’s view, this case is not so unusual as to overcome this

inference.

The Supreme Court has articulated several factors a court should consider in

determining “reasonableness”: (1) the burden on the defendant, (2) the forum state’s

interest in adjudicating the dispute, (3) the plaintiff’s interest in obtaining convenient

and effective relief, (4) the interstate judicial system’s interest in obtaining the most

efficient resolution of controversies, and (5) the shared interest of the States in

furthering fundamental substantive social policies. Burger King, 471 U.S. at 477

(citing World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286, 292 (1980)).

As to the first, the Court acknowledges that litigating this matter in Ohio will

certainly impose some burden on Linden, as it is undisputed that he now resides in

Romania. On the other hand, Linden manages to represent at least two clients,

including one Ohio-based, before a U.S. federal agency, using an Ohio address. To be

sure, Linden’s interface with the USPTO has largely been electronic. But,

particularly since the advent of the Covid-19 pandemic, technology likewise has

rapidly eased the burden of participating in geographically disparate judicial

proceedings. Discovery is largely electronic, which has been the case for some time.

But now, parties also routinely conduct depositions by Zoom or other video-

conferencing technology, and federal courts are likewise hearing arguments on

motions, and even holding evidentiary hearings, or conducting mediations, using that

same technology.

Second, Ohio has an interest in adjudicating the dispute, as FCS, an Ohio

resident, and Linden, a patent agent conducting long-term ongoing business in the

state, are defendants. Moreover, Linden holds himself out as Ohio-based to the

USPTO, and that address is discoverable by those searching for assistance with

patent prosecution.

As to the third factor, AmaTech certainly has an interest in obtaining

convenient and effective relief, although this factor is likely the same in every case;

the mere fact that it is convenient for AmaTech to sue Linden, FCS, and Finn in Ohio

thus should not carry too much weight. The fourth and fifth factors weigh slightly in

favor of exercising jurisdiction. Indeed, it is not clear that any other state would have

a stronger interest in adjudicating the matter, and litigating this matter piecemeal

(e.g., an action against FCS here and an action against Linden elsewhere) would serve

little purpose given the intertwined nature of the underlying facts.

In sum, exercising personal jurisdiction over Linden comports with the

requirements of due process, and the Court therefore DENIES his motion in that

regard.

B. Linden’s Arguments Regarding Insufficient Service Of Process Fail.

Linden also asks the Court to dismiss the claims against him for insufficient

service of process. (Mot., Doc. 35, #1519). He contends that service via email, which

the Court permitted by its August 19, 2021 Order (“Order,” Doc. 32), is insufficient

per Fed. R. Civ. P. 4 and therefore exercising personal jurisdiction over him violates

due process. The Court disagrees.

AmaTech points out, and the Court notes, that Linden could have entered a

limited appearance to oppose AmaTech’s motion for leave to serve without waiving

his Rule 12(b)(2) or 12(b)(5) defenses. Calista Enterprises Ltd. v. Tenza Trading Ltd.,

40 F. Supp. 3d 1371, 1377 (D. Or. 2014); Thompson v. Galetka, 42 F. App’x 397, 399

(10th Cir. 2002). From that, AmaTech argues that Linden’s instant motion is

procedurally defective and suggests it should have been filed as a motion for

reconsideration pursuant to Fed. R. Civ. P. 60(b). That Rule, however, is not a viable

procedural vehicle for the relief Linden seeks because it applies only to a “final

judgment, order, or proceeding.” Fed. R. Civ. P. 60(b). It does not permit relief from

an interlocutory order (i.e., an order not subject to immediate appeal). Whatever it

Takes Transmission & Parts, Inc. v. Cap. Core, Inc., No. 2:10-CV-72, 2014 WL

12653727, at *2 (S.D. Ohio Jan. 6, 2014) (citing McWhorter v. ELSEA, Inc., No. 2:00-

cv-473, 2006 WL 3483964, at *2 (S.D. Ohio Nov. 30, 2006)). Because the Court’s

August 19 Order was not final, Rule 60(b) is inapplicable.

“However, ‘[d]istrict courts have authority both under common law and Rule

54(b) to reconsider interlocutory orders and to reopen any part of a case before entry

of final judgment.’” Id. (quoting Rodriguez v. Tenn. Laborers Health & Welfare Fund,

89 F. App’x 949, 959 (6th Cir. 2004)). While reconsideration should not be used to “re-

litigate issues previously considered,” id. (quotation omitted), the Court notes that

this issue was not previously “litigated,” insofar as Linden did not file papers in

opposition.

While the Court has authority to revisit its previous Order, though, the Court

concludes that Linden’s arguments do not persuade. In that Order, the Court

permitted AmaTech to serve Linden via email pursuant to Fed. R. Civ. P. 4(f)(3).

Linden asserts that Art. X of the Hague Convention does not provide for email service,

and that Art. XI, which identifies alternative means, states only that it “shall not

prevent” contracting states from making alternative agreements. Because the U.S.

and Romania have made no such alternative agreement, he argues that Rule 4(f)(2)

is inapplicable. (Mot., Doc. 35, #1520). Unfortunately, such an argument—even if it

were correct as an interpretive matter, which the Court doubts—does nothing for

Linden, because, in its previous Order, “the Court decline[d] to determine whether

Rule 4(f)(2) would ultimately permit service” on Linden. (Order, Doc. 32, #1493 n.3).

Rather, the Court found the necessary authority in Rule 4(f)(3), which permits service

outside of the United States “by other means not prohibited by international

agreement, as the court orders.”

On that count, Linden argues that there is a hierarchy to 4(f)—i.e., that the

Court must consider Rules 4(f)(1) and (2) first—and that the Court’s reliance on Rule

4(f)(3) was therefore inconsistent with that Rule’s purpose as a “safety valve.” (Mot.,

Doc. 35, #1521). While the Court did acknowledge the existence of some authority to

that effect, it nevertheless “agree[d] with AmaTech that case law suggests that Rule

4(f)(3) may … be invoked without first considering Rules 4(f)(1) and 4(f)(2).” (Order,

Doc. 32, #1488). In his more recent filing, Linden offers no new authority that would

cause the Court to reconsider that analysis. See Louisville/Jefferson Cty. Metro Gov’t

v. Hotels.com, L.P., 590 F.3d 381, 389 (6th Cir. 2009) (listing as justification for

reconsidering interlocutory order “(1) an intervening change of controlling law;

(2) new evidence available; or (3) a need to correct a clear error or prevent manifest

injustice” (quoting Rodriguez, 89 F. App’x at 959)). And, in any case, “[m]indful of

the[] various approaches” taken by other courts, the Court did consider 4(f)(1) and

4(f)(2); it found that the former would not allow for email service and that the latter

was inconclusive, given uncertainty as to Linden’s precise address. (Order, Doc. 32,

#1489–91).

The Court is also confused by Linden’s argument that the Court should not

have invoked Rule 4(f)(3) because “as in this case, parties can routinely and

completely avoid attempts at international service per Rule 4(f)(1).” (Mot., Doc. 35,

#1521). If Linden means to concede that he has been dodging attempts at service, this

seems all the more reason to allow service under Rule 4(f)(3). The Court noted that

AmaTech had unsuccessfully attempted service in Florida and Ohio and had

requested a mailing address from Linden (via email) without response. (Order, Doc.

32, #1486–87). These good-faith attempts to apprise Linden of the litigation,

combined with a well-founded belief of his residence in Romania, satisfied the Court

that service via 4(f)(3) was proper. (Id. at #1492–93).

Finally, Linden argues that email service “is expressly prohibited by the

[Hague] Convention unless agreed between two or more Contracting States.” (Mot.,

Doc. 35, #1521). Not so. “As the court stated in Lexmark, ‘[v]arious courts have agreed

that service by email is not prohibited by the Hague Convention.” (Order, Doc. 32,

#1491 (quoting Lexmark Int'l, Inc. v. Ink Techs. Printer Supplies, LLC, 295 F.R.D.

259, 261 (S.D. Ohio 2013))). “At the very least, a signatory nation to the Hague

Convention must expressly object to a specific form of alternative service, like email,

in order to bar that method of service.” Ud. (citing Noco Co. v. Zhejiang Quingyou

Elec. Comm. Co., 338 F.R.D. 100, 106 (N.D. Ohio 2021))).

Linden has supplied no reason for the Court to upend its previous Order, and

the Court thus declines to do so. Accordingly, the Court DENIES Linden’s motion to

dismiss for insufficient service of process.

CONCLUSION

For the foregoing reasons, the Court DENIES Linden’s Motion to Dismiss

(Doc. 35).

SO ORDERED.

January 5, 2022

DATE DOUGLAS R. COLE

UNITED STATES DISTRICT JUDGE

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