United States District Court, E.D. Virginia, Norfolk Division
OPINION & ORDER
COKE MORGAN, JR. SENIOR UNITED STATES DISTRICT JUDGE
matters come to the Court on two (2) motions to dismiss, one
filed by Defendant-Counterclaimant Cargill, doc. 101, and one
filed by Defendants-Counterclaimants Commonwealth Scientific
and Industrial Research Organization ("CSIRO"),
doc. 177; and a motion to compel, doc. 108, filed by CSIRO.
On April 10, 2019, this Court heard arguments on these
motions as well as arguments on the parties proposed
constructions of several disputed terms. This Court
DENIED both motions to dismiss and
GRANTED the motion to compel IN
PART and DENIED it IN
PART from the bench. This Opinion and Order is
issued to further explain the reasons stated on the bench.
patent infringement and contract action is the latest in a
series of intellectual property and other legal battles
across the globe between the parties. See Am. Compl.
¶¶ 24-25. This case is about United States patents
on plants which formulate certain "long chain"
Plant Science is incorporated in Delaware with its principal
place of business in New Jersey. Doc. 43 ¶ 1. Cargill is
a corporation incorporated in Delaware with its principal
place of business in Minnesota. Doc. 101-1. ¶ 3. Cargill
maintains large distribution networks and has some business
in Virginia. See Id. ¶¶ 9-10.
Scientific and Industrial Research Organization
("CSIRO") is an Australian entity created by the
Australian government with its principal place of business in
the Australian Capital Territory ("ATC"). The
Grains Research and Development Corporation is also an
Australian entity with its principal place of business in
ATC. Nuseed Pty. Ltd. has its principal place of business in
Plant Science, LP (collectively with counterclaim-defendant,
BASF Plant Science GMBH, "BASF") is a
self-described "pioneer" in developing plant-based
biotechnology. Am. Compl. ¶ 15. Since 1998, BASF has
attempted to create a plant which can make long chain omega-3
polyunsaturated fatty acids ("LC-PUFA"),
docosahexaenoic acid ("DHA") and eicosapentaenoic
acid ("EPA"). Id. In 2011, BASF and Cargill
entered into an agreement to commercialize a canola oil
product that would contain such fatty acids. Id.
¶¶ 16-18. BASF agreed to develop the seeds and
obtain regulatory approval, and Cargill agreed to cultivate,
process, extract, and commercialize the oil product.
Id. ¶ 17. Cargill and BASF planned to grow and
cultivate their seeds across the United States, but not in
Virginia. Doc. 101-1 ¶ 8; doc. 102 at 11. At the
hearing, counsel asserted that the agreement states that the
cooperative between the two (2) entities is not a
partnership, notwithstanding their cooperation for mutual
benefit and profit. In November of 2017, BASF petitioned the
United States Department of Agriculture for deregulation of
canola seeds rich in the fatty acids. Am. Compl. ¶ 21.
Approval is expected this year. Id.
March 1, 2008, Commonwealth Scientific and Industrial
Research Organization ("CSIRO") and BASF entered
into a Materials Transfer and Evaluation Agreement.
("MTEA"). Doc. 165-1 ("MTEA"). Under the
MTEA, the parties wished to collaborate and jointly evaluate
each other's genetic data on EPA and DHA producing
plants. MTEA Recitals at B. The MTEA speaks to how the
parties will share information and how they will respectively
own resulting intellectual property. Id.
¶¶ 4-6. The MTEA was governed "by the law in
force in The Australian Capital Territory" and the
parties thereto agreed to "submit to the exclusive
jurisdiction of the courts of the Australian Capital
Territory." Id. ¶ 14.1. That agreement was
to last for two (2) years. Id. ¶ 2.1. According
to its "survival clause" clauses 1, 6, 8, 9, 9, 10,
11.3, and 12 survived termination; the choice of law and
forum provision was not on that list. Id. (¶
deposited samples of the seeds that it and Cargill had
developed with the American Type Culture Collection
("ATCC") in Manassas, Virginia as a part of its
patent requirements. Doc. 43 ¶ 19. On March 22, 2017,
BASF learned that Nuseed had requested samples of its seeds
from ATCC. Id. ¶ 35.
2016, after BASF and CSIRO had discussed cross-licensing
their similar patents, BASF and Nuseed Pty. Ltd.
("Nuseed") began discussing United States licenses.
Id. ¶ 25. Evidently, Nuseed demanded high net
payments, which BASF thought was unacceptable. Id.
(¶ 33. BASF believed there to be a "clear and
immediate" threat of litigation, so it filed suit on
April 13, 2017 in the District of Delaware. Id.
¶¶ 37-38. That court held that Nuseed would have
lacked standing to sue on the patents and dismissed the
complaint without prejudice to filing in a forum that could
exercise jurisdiction over CSIRO. Id. ¶ 38.
procedural history of this case is summarized in this
Court's Claim Construction Order. In the interest of
brevity, this Court will not repeat that summary.
MOTIONS TO DISMISS
Court heard arguments on two (2) motions to dismiss: the
first filed by Cargill to dismiss it from the case for lack
of personal jurisdiction and improper venue, doc. 101, and
the second filed by CSIRO to have certain counterclaims and
defenses dismissed under the common law doctrine of forum
non conveniens in favor of an Australian forum, doc.
177. For reasons stated at the hearing and in this Opinion
and Order, both motions are DENIED.
CARGILL'S MOTION TO DISMISS
moved under rules 12(b)(2) and 12(b)(3) of the Federal Rules
of Civil Procedure to dismiss it from the case, arguing that
this Court lacks personal jurisdiction over it and this Court
is an improper venue. Doc. 101.
resolving a motion to dismiss under Rule 12(b)(2), courts
should conduct a two-step process: first, a court must
determine whether the long-arm statute of the state in which
it sits would authorize service of process of the Defendant,
and second, whether the assertion of personal jurisdiction
violates due process. Genetic Implant Systems, Inc. v.
Core-Vent Corp., 123. F.3d 1455, 1458 (Fed. Cir. 1997).
Virginia, the long-arm statute has been read to generally
permit jurisdiction as far as the Due Process Clause will
permit. Prototype Prods.. Inc. v. Reset. Inc..
F.Supp.2d 691, 700 (E.D. Va. 2012): see also Touchcom.
Inc. v. Bereskin & Parr. 574 F.3d 1403, 1411 (Fed.
Cir. 2009) (observing that "satisfaction of
Virginia's requirements for service of process is
satisfied when due process is satisfied"). Accordingly,
the analysis here revolves solely around the second prong of
the personal jurisdiction analysis.
court's exercise of jurisdiction over the parties before
it must comply with the requirements of the federal
Constitution, specifically the Due Process Clause.
Int'l Shoe V.Washington. 326 U.S. 310, 316
(1945). As the Supreme Court declared, "due process
requires only that in order to subject a defendant to a
judgment in personam, if he be not present within
the territory of the forum, he have certain minimum contacts
with it such that the maintenance of the suit does not offend
'traditional notions of fair play and substantial
justice."' Id. "But the foreseeability
that is critical to due process analysis is . . . that the
defendant's conduct and connection with the forum State
are such that he should reasonably anticipate being haled
into court there." World-Wide Volkswaeon Corp. v.
Woodson. 444 U.S. 286, 297 (1980).
personal jurisdiction is properly exercised over a foreign
defendant entails weighing three (3) factors: (1) whether the
defendant purposefully directed activities to residents of
the forum, (2) whether the claim arise out of or relates to
the defendant's activities with the forum, and (3)
whether assertion of personal jurisdiction is reasonable and
fair. Kilink. Inc. v. Paost Licensing GmbH & Co.
KG. 848 F.3d 1346, 1353 (Fed. Cir. 2017). Activities
conducted outside the forum may sufficiently tie a defendant
to the forum if the activities constitute a purposeful
availment of the forum and its laws. Am. GNC Corp. v.
GoPro. Inc.. 2018 WL 6074395, at *11 (S.D. Cal. November
6, 2018) ("Federal Circuit precedent shows that such
indirect, yet purposeful contacts with the forum provide a
basis for the exercise of personal jurisdiction.").
Moreover, contacts of a third party can be imputed onto
another party for purposes of personal jurisdiction.
Celgard, LLC v. SK Innovation Co.. 792 F.3d 1373,
1379 (Fed. Cir. 2015); see also Ann. Patent Digest (Matthews)
§ 36:80 ("Generally, the acts of an agent acting
within in the scope of its agency, and the resulting contacts
there from, are imputable to the principal for determining
specific personal jurisdiction of the principal.");
Daimler AG v. Bauman, 571 U.S. 117, 135 n.13 (2014)
("[A] corporation can purposefully avail itself of a
forum by directing its agents or distributors to take action
argues that this Court may exercise general jurisdiction over
Cargill, because of Cargill's "robust and systematic
contacts" with Virginia. Doc. 107 at 24. CSIRO argues
that these contacts include Cargill's 1, 800 employees in
Virginia, its business locations is seven (7) Virginia
cities, its land ownership in Virginia, and creates a large
quantity of product here in Virginia. Id. It also
argues that the fact that Cargill has registered to business
in Virginia provides a "separate and independent"
basis for general jurisdiction. Id. at 25. Moreover,
CSIO argues that conduct that BASF performed on behalf of
Cargill and with Cargill's permission, such as the ATCC
deposit, is attributable to Cargill for purposes of personal
jurisdiction. Doc. 107 at 16-17.
argues that this Court lacks general jurisdiction over it,
because it is not "essentially at home" in Virginia
and that there are no exceptional circumstances which would
otherwise justify exercising jurisdiction. Doc. 102 at 16-17.
Cargill argues that it is a Delaware corporation with its
principal place of business in Minnesota. Id. at 16.
Responding to CSIRO's argument that business registration
provides general jurisdiction, Cargill argues that such an
interpretation has been rejected by many courts and defies
common sense. Doc. 114 at 13.
Court is persuaded by CSIRO's argument. It is difficult
to imagine how Cargill could not anticipate being haled into
this Court for this dispute. To begin, Cargill has an
extensive presence in this Commonwealth. It employs 1, 800
employees, owns land in Virginia, it is registered to do
business here, and maintains business locations throughout
the Commonwealth. Accordingly, the Court is of the opinion
that Cargill has purposefully availed itself of Virginia; its
laws; and, consequently, its jurisdiction.
the Court believes that the agreement between BASF and
Cargill amounts to a partnership, notwithstanding what it may
Both parties entered into an agreement to commercialize the
deposited seeds for their own mutual economic benefit.
Furthermore, the parties divided the work necessary to
accomplish those ends. Thus, when BASF deposited the seeds
with the ATCC in this District and filed suit in this
District, it brought matters central to that partnership into
this Court's jurisdiction. Cargill does not dispute that
this was done pursuant to, in fact critical to, the goals of
its agreement with BASF. Cargill and BASF are working
together to commercialize their potentially infringing
product, and in doing so took action in this District.
Indeed, Cargill and BASF are in "lock step" in
their business strategy. Doc. 43. If 32. ...