United States District Court, W.D. Kentucky, Louisville
Charles R. Simpson III, Senior Judge United States District
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.
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.
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.
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.
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.
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.
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.
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:
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.
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