IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF DELAWARE

BLACKBIRD TECH LLC d/b/a

BLACKBIRD TECHNOLOGIES,
Plaintiff,
V.

SAKKA'S STORES, iNC.,

Defendant.

BLACKBIRD TECH LLC d/b/a

BLACKBIRD TECHNOLOGIES,
Plaintiff,
V.

MODA LATINA, LLC d/b/a LEONISA,

Defendant.

BLACKBIRD TECH LLC d/b/a

BLACKBIRD TECHNOLOGIES,
Plaintiff,

v.
. ORION MANUFACTURING, INC. d/b/a
VEDETTE SHAPEWEAR,
Defendants.

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Civil Action No. 14-1256-GMS

Civil Action No. 14-1258-GMS

Civil Action No. 14-1262-GMS

ORDER
WHEREAS, on October 1, 2014, the plaintiff Blackbird Tech LLC d/b/a Blackbird
Technologies ("Blackbird") filed individual patent infringement lawsuits against defendants
Sakka's Stores, Inc. ("SSI") (C.A. 14-1256-GMS, D.I. 1); Moda Latina, LLC d/b/a Leonisa
("Leonisa") (C.A. 14-1258-GMS, D.I. 1); and Orion Manufacturing, Inc. d/b/a Vedette
Shapewear ("Orion") (C.A. 14-1262-GMS, D.I. 1.) Blackbird alleges that each of the defendants
infringes U.S. Patent No. 7,081,036;
WHEREAS, presently before the court are SSI's, Leonisa's, and Orion's individual
motions to dismiss for lack of personal jurisdiction or, alternatively, to transfer venue. (C.A. 141256-GMS, D.I. 12; C.A. 14-1258-GMS, D.I. 11; C.A. 14-1262-GMS, D.I. 7.)
Personal jurisdiction is derived from two separate sources: state statutory law and U.S.
constitutional due process. !named Corp. v. Kuzmak, 249 F.3d 1356, 1359-60 (Fed. Cir. 2001).
In responding to the motions, Blackbird maintains that the Delaware long-arm statute is satisfied
for each of the defendants under a theory of "dual jurisdiction." See Belden Techs., Inc. v. LS

Corp., 829 F. Supp. 2d 260, 267 (D. Del. 2010) ("[T]he dual jurisdiction concept arises from at
least partial satisfaction of subsections (1) and (4) of the Delaware long-arm statute .... Dual
jurisdiction may be established when a manufacturer has sufficient general contacts with
Delaware and the plaintiffs' claims arise out of those contacts."). Blackbird also asserts that
Leonisa in particular satisfies section 3104(c)(3) of the long-arm statute. Del. Code Ann. tit. 10,
3104(c)(3) (West). Moreover, Blackbird argues that the exercise of specific jurisdiction over

the defendants would comport with due process.

Critical to both the statutory and due process inquiries is the question of whether the
defendants have demonstrated an "intent to serve the Delaware market," Graphics Props.

Holdings, Inc. v. ASUS Computer Int'!, No. 13-864-LPS, 2014 WL 4949589, at *5 (D. Del. Sept.
29, 2014), or have "purposefully directed [their] activities at residents of the forum." See Burger
King Corp. v. Rudzewicz, 471 U.S. 462, 472 (1985). Previously, Delaware courts indicated that
"[a] non-resident firm's intent to serve the United States market is sufficient to establish an intent
to serve the Delaware market, unless there is evidence that the firm intended to exclude from its
marketing and distribution efforts some portion of the country that includes Delaware."
Graphics Props. Holdings, Inc. v. ASUS Computer Int'!, No. 13-864-LPS, 2014 WL 4949589, at
*3 (D. Del. Sept. 29, 2014) (quoting Power Integrations, Inc. v. BCD Semiconductor Corp.,
547 F. Supp. 2d 365, 373 (D. Del. 2008)). The court is not convinced this statement remains
good law in the due process context.

See J

Mcintyre Mach., Ltd. v. Nicastro,

131 S. Ct. 2780(2011); see also Polar Electro Oy v. Suunto Oy, No. 11-1100-GMS, 2015 WL
2248439, at *5 n.6 (D. Del. May 12, 2015) ("Both the plurality and concurring opinions in
Mcintyre show that sales in a forum made through a national distributor do not evince purposeful
availment

of. that

forum's

laws.");

Oticon,

Inc.

v.

Sebotek Hearing

Sys.,

LLC,

865 F. Supp. 2d 501, 513 (D.N.J. 2011) ("Read as a whole, [Mcintyre] does not clearly or
. conclusively

define

the

breadth

and

scope

of

the

stream

of

commerce

theory .... However, ... there is no doubt that [Mcintyre] stands for the proposition that
targeting the national market is not enough to impute jurisdiction to all the forum States. In that
regard, [Mcintyre] overruled the line of cases exemplified by ... Power Integrations, which held
to the contrary."). And because the Delaware long-arm statute has been construed "to confer
jurisdiction to the maximum extent possible under the Due Process Clause," the dual jurisdiction
doctrine is to be similarly limited.

See Merck & Co., Inc. v. Barr Labs., Inc.,

179 F. Supp. 2d 368, 372 (D. Del. 2002).

While the Supreme Court in Mcintyre did not announce a binding rule going forward,
Justice Breyer's concurrence illustrates the narrowest holding. See Marks v. United States, 430
U.S. 188, 193 (1977) ("When a fragmented Court decides a case and no single rationale
explaining the result enjoys the assent of five Justices, the holding of the Court may be viewed as
that position taken by those Members who concurred in the judgments on the narrowest
grounds." (internal quotation marks omitted)).
[T]he Court, in separate opinions, has strongly suggested that a
single sale of a product in a State does not constitute an adequate
basis for asserting jurisdiction over an out-of-state defendant, even
if that defendant places his goods in the stream of commerce, fully
aware (and hoping) that such a sale will take place.
J Mcintyre Mach., Ltd. v. Nicastro, 131 S. Ct. 2780, 2792 (2011) (Breyer, J., concurring).

Rather, the plaintiff must prove purposeful availment by pointing to a "regular flow or regular
course of sales" in the forum state, or "'something more,' such as special state-related design,
advertising, advice, marketing, or anything else." Id. (internal quotation marks and alterations
omitted).
Based on the limited information currently available, the court cannot say that Blackbird
has proven the defendants' intent to serve the Delaware market or a purposeful availment of
Delaware's laws.

Blackbird, however, requests an opportunity to conduct jurisdictional

discovery. 1 "Although the plaintiff bears the burden of demonstrating facts that support personal
jurisdiction, courts are to assist the plaintiff by allowing jurisdictional discovery unless the
plaintiffs claim is clearly frivolous." Toys "R" Us, Inc. v. Step Two, S.A., 318 F.3d 446, 356 (3d
Cir. 2003) (internal citation and quotation marks omitted). The court is satisfied that Blackbird's
request is not "clearly frivolous." The defendants have already each acknowledged that their

1
Third Circuit law governs the court's decision to permit jurisdictional discovery. See Autogenomics, Inc.
v. Oxford Gene Tech. Ltd., 566 F.3d 1012, 1021 (Fed. Cir. 2009).

.I

I
I

:I

accused products have been shipped to Delaware customers. Blackbird is entitled to inquire as to
the full extent of the defendants' dealings with the State of Delaware, not necessarily limited to
sales of the accused products.
WHEREAS, the court having considered the parties' written submissions as well as the
applicable law;
IT IS HEREBY ORDERED THAT:
- 1. The above-captioned defendants' Motions to Dismiss for Lack of Personal Jurisdiction
(C.A. 14-1256-GMS, D.I. 12; C.A. 14-1258-GMS, D.I. 11; C.A. 14-1262-GMS, D.I. 7)
are held in ABEYANCE, awaiting jurisdictional discovery.
2. Blackbird's requests for limited jurisdictional discovery in the above-captioned cases
(C.A. 14-1256-GMS, D.I. 22 at 10; C.A. 14-1258-GMS, D.I. 17 at 11; C.A. 14-1262GMS, D.I. 12 at 11) are GRANTED.
3. Blackbird and the respective defendants shall meet and confer to discuss the scope and
timing of jurisdictional discovery.

The parties are direded to follow the court's

discovery dispute procedures should they require further guidance.

4. At the close of discovery, defendants seeking to maintain their objection shall submit
updated briefing, renewing their motion to dismiss. The parties need not readdress their
arguments concerning transfer of venue.

Dated: July ~l , 2015