United States District Court, E.D. Wisconsin
DECISION AND ORDER GRANTING DEFENDANTS' MOTION TO
DISMISS OR TRANSFER VENUE OR, IN THE ALTERNATIVE, TO STAY
(DKT. NO. 11) AND DISMISSING THIS ACTION FOR LACK OF PERSONAL
PAMELA PEPPER United States District Judge.
August 11, 2015, plaintiff Woodway USA, Inc., filed a
complaint under 35 U.S.C. §§271-299, naming Samsara
Fitness, LLC, and Chapco, Inc., as defendants. Dkt. No. 1.
The complaint asserts that the defendants are infringing on
two of Woodway's patents for motorless, manually-operated
treadmills. Id. ¶¶7-24. A declaratory
judgment action involving the same parties and patents
currently is pending in the District of Connecticut. In this
court, the defendants have filed a motion to dismiss or
transfer venue or, in the alternative, to stay. Dkt. No. 11.
The court grants the defendants' motion based on lack of
personal jurisdiction over defendant Chapco, Inc.
USA, Inc., is a Wisconsin company, with its principal place
of business in Waukesha, Wisconsin. Dkt. No. 1, ¶1.
Woodway is the assignee and owner of two patents - U.S.
Patent Nos. 8, 986, 169 and 9, 039, 580 - both entitled
"Manual Treadmills and Methods of Operating the
Same." Id. ¶¶8-10, 17-19. The
'169 patent was issued on March 24, 2015 and the '580
patent was issued on May 26, 2015. Id.
¶¶9, 18. Woodway has manufactured and sold its
motorless CURVE treadmill, which embodies the inventions of
the '169 and '580 patents, since 2009. Dkt. No. 18 at
Fitness, LLC, is a Connecticut limited liability company,
with its principal place of business in Chester, Connecticut.
Dkt. No. 1, ¶2. Samsara sells and offers for sale
human-powered treadmills under the name TrueForm Runner. Dkt.
No. 12 at 2. Chapco, Inc. is a Connecticut corporation, with
its principal place of business in Chester, Connecticut. Dkt.
No. 1, ¶3. Chapco specializes in product engineering and
development, contract manufacturing, metal fabrication, and
assembly in a variety of industries. Dkt. No. 12 at 2.
alleges that the defendants are manufacturing, selling,
offering for sale, and/or using certain manual treadmills -
including, but not limited to, the TrueForm Runner - without
authorization and in violation of Woodway's patent rights
under 35 U.S.C. §271(a). Dkt No. 1, ¶¶11, 20.
Woodway further alleges that the defendants are actively
inducing the direct infringement of its patents, without
authorization and in violation of 35 U.S.C. §271(b), by
aiding, abetting, and encouraging its customers' use of
the TrueForm Runner with knowledge of the infringement and
with the intent to cause such infringement. Id.
filed this patent infringement lawsuit on August 11, 2015,
but it did not immediately serve either defendant with the
complaint. Woodway indicates that it withheld service in
order to engage in good faith business discussions with the
defendants. Dkt. No. 18 at 4-5. During that time, Woodway
sent letters to the defendants' customers and dealers,
informing them of the asserted patents and Woodway's
intellectual property rights in them. Dkt. No. 16, ¶10.
Approximately seventy targets received these letters, which
included customers located throughout the United States.
defendants contend that Woodway did not attempt to engage in
any good faith negotiations with them in October 2015 or
thereafter. Dkt. No. 12-2, ¶17. The defendants also
maintain that Woodway used the unserved complaint to threaten
and harass Samsara's customers. Dkt. No. 12 at 4; Dkt.
No. 12-3. Upon learning of Woodway's
"anti-competitive efforts, " Samsara and Chapco
filed suit against Woodway in the District of Connecticut on
November 16, 2015 - approximately three months after Woodway
filed suit in this court. Dkt. No. 12 at 4. The Connecticut
complaint sought declarations of non-infringement and
invalidity with respect to the same two patents at issue
here. Dkt. No. 12 at 4; Dkt. No. 12-1. Samsara and Chapco
served Woodway with the Connecticut complaint on November 17,
2015 - almost immediately. Dkt. No. 12 at 4. The following
day, Woodway served Samsara and Chapco with the Wisconsin
complaint. Id.; Dkt. Nos. 9-10.
cases are active, although at this point, the Connecticut
case is more active than the Wisconsin one. On December 8,
2015, Woodway filed a motion in the District of Connecticut
to dismiss or stay the Connecticut action, arguing the
"first-to-file rule." Dkt. 12 at 4. That motion is
fully briefed and pending resolution in the Connecticut
court. Indeed, on February 19, 2016, the magistrate judge in
Connecticut held a case management/scheduling conference, and
on February 22, 2016, entered a scheduling order, requiring
the parties in the Connecticut litigation to begin exchanging
discovery. Dkt. No. 22-1. The Connecticut magistrate judge
even scheduled a status conference for March 10, 2016, at
which time it hoped to hear of this court's progress on
the current motion to dismiss. Id. at 2.
and Chapco filed their motion to dismiss in this court on
December 9. 2015. Dkt. Nos. 11-12. On January 4, 2016,
Woodway filed a brief in opposition to Samsara and
Chapco's motion. Dkt. No. 18. Samsara and Chapco filed a
reply brief on January 15, 2016. Dkt. No. 20. On February 22,
2016 - the same day, as it turns out, that the Connecticut
magistrate judge issued the scheduling order - this court
heard oral argument on the defendants' motion.
See Dkt. No. 21. At the hearing the parties informed
the court that the magistrate judge in Connecticut had
entered a scheduling order, and reported that the statement
of infringement in that case was due April 18, 2016.
Id. at 2.
court - I, Judge Pepper, to be specific - did not
issue a ruling prior to those dates, and as a result has
caused delay and uncertainty in the litigation in the
District of Connecticut. The court expresses its regret to
the parties in both cases, and to the judges in Connecticut,
for its delay in this case.