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Advanced Solutions Life Sciences, LLC v. Biobots, Inc.

United States District Court, W.D. Kentucky, Louisville

May 12, 2017

ADVANCED SOLUTIONS LIFE SCIENCES, LLC PLAINTIFF
v.
BIOBOTS, INC. DEFENDANT

          MEMORANDUM OPINION

          Charles R. Simpson III, Senior Judge United States District Court

         I. Introduction

         This matter is before the Court on the motion of Defendant BioBots, Inc. (“BioBots”) to dismiss for lack of personal jurisdiction under Federal Rule of Civil Procedure 12(b)(2) or, in the alternative, to transfer this action to the United States District Court for the Eastern District of Pennsylvania under 28 U.S.C. §§ 1404 or 1406, ECF No. 9. Plaintiff Advanced Solutions Life Sciences, LLC (“ASLS”) responded, ECF No. 10. BioBots replied, ECF No. 15. For the following reasons, the Court will grant in part and deny in part BioBots' motion to dismiss or, in the alternative, transfer. The Court will transfer the case to the United States District Court for the Eastern District of Pennsylvania.

         II. Background

         ASLS owns and uses the registered trademark BIOASSEMBLYBOT for three-dimensional (3D) bioprinting and tissue fabrication. Compl. ¶ 1, ECF No. 1. The BIOASSEMBLYBOT mark is registered for “[c]omputer robotics-supported workstations comprising three-dimensional (3D) printers, multi-axis robots, cartridges for containing printing material, dispensers, video cameras and software for visualization of workstation operations, sensors and software for environmental control of workstation, for fabricating and assembling engineered tissue constructs.” Id. ¶ 10.

         BioBots is a start-up company that designs, develops, and markets a desktop 3D bioprinter under the BIOBOTS mark. Cabrera Decl. ¶ 3-4, ECF No. 9-2. On November 11, 2016, ASLS filed suit against BioBots. Compl. 1, ECF No. 1. ASLS alleges that BioBots is infringing on its BIOASSEMBLYBOT trademark and is competing unfairly against it by selling products deliberately named to infringe on ASLS's trademark and to confuse customers. Id. ¶ 2. ASLS also alleges that BioBots is “cybersquatting” by using the domain names www.biobots.com and www.biobots.io because these domain names are confusingly similar to ASLS's BIOASSEMBLYBOT mark. Id. ASLS asserts causes of action for: (1) federal trademark infringement under the Lanham Act § 32(1), 15 U.S.C. § 1114(1) (Count I), (2) federal unfair competition under the Lanham Act § 43(a), 15 U.S.C. § 1125(a) (Count II), (3) violation of the Anticybersquatting Consumer Protection Act (ACPA) under the Lanham Act § 43(d), 15 U.S.C. § 1125(d) (Count III), and (4) Kentucky common law trademark infringement and unfair competition (Count IV). Id. at 5-8.

         BioBots is a Delaware corporation with a principal place of business in Philadelphia, Pennsylvania. Id. ¶ 5. ASLS alleges that this Court has personal jurisdiction over BioBots “because it has committed and is continuing to commit substantial acts of infringement in this judicial district by marketing, promoting, offering for sale, selling, and/or distributing infringing products in this judicial district.” Id. ¶ 8. ASLS also alleges that “[o]n information and belief, BioBots has offered, promoted, sold, shipped, provided, and/or installed 3D bioprinters using the BIOBOTS Mark to an entity or entities located within the state of Kentucky.” Id. ¶ 17.

         In support of its motion, BioBots submitted the declaration of its Chief Executive Officer, Daniel Cabrera. Cabrera Decl. ¶ 1, ECF No. 9-2. Cabrera states that “BioBots does not conduct business, transact business, or provide services in Kentucky, nor is it licensed or registered to do so in Kentucky.” Id. ¶ 6. BioBots does not own property or maintain offices in Kentucky. Id. ¶¶ 8, 12. BioBots' employees and agents are not residents of Kentucky and BioBots has never sent any employees or agents to Kentucky. Id. ¶¶ 9-11. No employees or agents of BioBots have attended trade shows or exhibitions in Kentucky. Id. ¶ 11. No Kentucky residents own stock in BioBots. Id. ¶ 13. BioBots does not have a registered agent for service of process in Kentucky and has never been involved in a lawsuit in Kentucky before the instant matter. Id. ¶¶ 10, 14.

         According to Cabrera, “BioBots has completed only one (1) bioprinter sale in any way related to Kentucky. That lone sale amounted to less than 1% of BioBots' bioprinter revenue.” Id. ¶ 16. The sale occurred because a University of Louisville researcher saw one of BioBots' bioprinters at a conference in Boston, Massachusetts. Id. A few days later, the researcher emailed BioBots to schedule a telephone call. Id. After the telephone call, the researcher was provided with a price quote and he purchased a BioBots 3D bioprinter. Id. BioBots maintains that this is the only 3D bioprinter that it has sold to a Kentucky resident. Id.

         In addition to this bioprinter sale, BioBots has sold laboratory materials once to a Kentucky resident through its website. Id. ¶ 17. Cabrera states that “BioBots' website can be viewed anywhere in the world. The website is interactive to the extent it allows users to contact BioBots or initiate purchases over the Internet.” Id. Cabrera also states that “nothing about website [sic] or its content is directed toward Kentucky residents as opposed to persons in any other location around the globe.” Id. These two sales-the sale of the bioprinter to the University of Louisville researcher and the sale of laboratory materials over BioBots' website-are the only sales BioBots has made to Kentucky residents. Id. ¶¶ 16-17.

         Cabrera states that “BioBots does not direct its advertising, marketing, or sales efforts toward Kentucky.” Id. ¶ 7. ASLS disputes this assertion and submits the declaration of Stuart K. Williams, II, Ph.D. Williams Decl., ECF No. 10-1. Dr. Williams states that he is a professor at the University of Louisville, where the sole BioBots 3D bioprinter in Kentucky is located. Id. ¶¶ 4-5. He states that in 2016, he received approximately five or six emails from BioBots. Id. ¶ 6. He states that most of them appeared to be mass marketing emails regarding BioBots and its products. Id. He attaches the most recent email he received, a holiday greeting that he received on December 23, 2016. Id. The subject line of the attached email is “Happy Holidays.” 12/23/2016 Email, ECF No. 10-1. The email reads:

         Happy Holidays!

Thank you for being a part of our company's journey! It has been an incredible few months for BioBots. Our community of users now extends to nearly 30 countries, and we count hundreds of incredible scientists among our ranks.
None of this would be possible without your help and support, thank you for being on our team. Wishing you and your family a safe, and lovely holiday season.
Warmly,
Your friends at ...

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