United States District Court, D. Nebraska
MEMORANDUM AND ORDER
M. GERRARD UNITED STATES DISTRICT JUDGE.
matter is before the Court on the defendant EQ
Bioscience's motion to dismiss plaintiff's complaint
for declaratory judgment or, in the alternative, transfer
venue (filing 14). For the reasons discussed below,
the Court will deny this motion.
plaintiff has alleged and produced evidence of specific facts
it contends support jurisdiction over the defendant in this
case. The plaintiff, Prevention, LLC, is a Nebraska limited
liability company. Filing 1 at 1; filing
23-1 at 1. Its owners and sole members are Eleanor
G. Rogan and Ercole L. Cavalieri. Filing 23-1 at 1;
filing 23-2 at 2. Both are faculty at the University
of Nebraska Medical Center. Filing 1 at 2; filing
23-1 at 1; filing 23-2 at 1. Both are
Nebraska residents, and were Nebraska residents at all
relevant times. See, filing 22 at 2; filing
23-1 at 1; filing 23-2 at 1. The plaintiff
owns a patent that covers, in part, certain pharmaceutical
compositions intended to help prevent some forms of cancer.
See filing 1-1 at 3. The original
application for the patent, Patent Application No. 10/940,
600 (Application 600), was submitted by Cavalieri and Rogan.
Filing 1 at 2; filing 23-1 at 1; filing
23-2 at 1. In August 2008, Cavalieri and Rogan
assigned Application 600 to the plaintiff. Filing 1
at 2; filing 23-1 at 1; filing 23-2 at 1-2.
defendant, EQ Biosciences, Inc., is a Nevada corporation.
Filing 22 at 1; filing 25-4. Its
headquarters are in Nevada, and it maintains no property,
offices, bank accounts, or corporate records in Nebraska.
Filing 15 at 3; filing 16-2 at 2. John
Raffanti and Stephen Sankowich, who both live outside
Nebraska, are officers of the defendant. Filing 22
at 1; see, filing 24-2; filing
24-3. In October 2009, prior to the defendant's
incorporation, Raffanti and Sankowich traveled to Nebraska to
meet with Rogan, Cavalieri, and one other individual. Filing
22 at 2; filing 23-1 at 2-3; filing
23-2 at 2-3. At the meeting, they discussed "the
formation and ownership interests in the entity, EQ
Biosciences, Inc." Filing 22 at 2;
see, filing 23-1 at 2; filing 23-2
at 2. Additionally, the plaintiff has produced evidence that
they negotiated the terms of an agreement for the plaintiff
to license Application 600 to the defendant. Filing
22 at 2; see, filing 23-1 at 3,
63; filing 23-2 at 3. The defendant disputes that
negotiations took place. Filing 24 at 3. Rather, the
defendant points to Sankowich's affidavit, in which he
states, "In October 2009, I traveled to Nebraska for the
sole purpose of meeting the members of Prevention, LLC, and
learning more about their research. I made the trip because I
was interested in learning more about the opportunity to
invest in [the compounds covered by Application 600] before
agreeing to commit to any business venture."
See, filing 24 at 3; filing 25-3.
November 2009, the defendant was incorporated. Filing
25-4 at 1. Cavalieri, Rogan, Raffanti, and Sankowich
were all listed as directors in the articles of
incorporation. Filing 25-4 at 1-2. On December 17,
2009, the plaintiff and the defendant entered into a license
agreement for Application 600. Filing 1 at 2; filing
1-4 at 1. The defendant wired its payment for the
license to a Nebraska bank. Filing 22 at 1; filing
23-1 at 3; filing 23-2 at 3. The defendant
trademarked the compounds covered by Application 600 as
"Prevennia." Filing 1 at 2; see
plaintiff contends that after the parties entered into the
license agreement, Raffanti, acting on the defendant's
behalf, "continuously sent correspondence" to Rogan
and Cavalieri, requesting various forms of assistance. Filing
22 at 2. For example, Raffanti asked Rogan and
Cavalieri to write materials for the defendant's website,
review and critique the website, and gather information for
and write large portions of an FDA application for Prevennia.
Filing 22 at 2-3; filing 23-1 at 3; filing
23-2 at 3.
August 2010, Rogan and Cavalieri resigned from their
positions with the defendant. Filing 22 at 1-2;
filing 23-1 at 3; filing 23-2 at 3. The
plaintiff alleges that on March 8, 2011, the defendant sent a
demand letter to the plaintiff claiming that the plaintiff
violated the license agreement. Filing 1 at 4. The
defendant sent additional demand letters on September 19,
2013, and June 26, 2015. Filing 1 at 4. The latest
of these letters is attached to the complaint. It asserts
that after Cavalieri and Rogan resigned from their roles with
the defendant in 2010, they "ceased assisting EQ
Biosciences in marketing and developing Prevennia, despite
requirements in the Agreement." Filing 1-6 at
2. The demand letter further states that "by failing to
follow through on promises to promote and market the
technology, including conducting a human clinical trial, [the
plaintiff] is undermining [the defendant's] ability to
profit from the Agreement." Filing 1-6 at 3.
Additionally, the letter asserts that the plaintiff began
working with another company to develop and market products
that relied on the technology covered in Application 600, in
violation of the license agreement. Filing 1-6 at
2-3. In response to the defendant's implication that the
plaintiff was in breach of contract, the plaintiff filed the
present action seeking a declaration that they have not
violated the license agreement.
jurisdiction is challenged on a pretrial motion to dismiss,
the nonmoving party need only make a prima facie showing of
jurisdiction. Pangaea, Inc. v. Flying Burrito LLC,
647 F.3d 741, 745 (8th Cir. 2011); see Fastpath, Inc. v.
Arbela Techs. Corp., 760 F.3d 816, 820 (8th Cir. 2014).
The evidence is viewed in the light most favorable to the
plaintiff. Viasystems, Inc. v. EBM-Papst St. Georgen GmbH
& Co., 646 F.3d 589, 592 (8th Cir. 2011).
Nonetheless, if the defendant controverts or denies
jurisdiction, the plaintiff still carries the burden of
proof. See, Fastpath, 760 F.3d at 820; Dairy
Farmers of Am., Inc. v. Bassett & Walker Int'l,
Inc., 702 F.3d 472, 475 (8th Cir. 2012);
Viasystems, 646 F.3d at 592; Wells Dairy, Inc.
v. Food Movers Int'l, Inc., 607 F.3d 515, 518 (8th
Cir. 2010); Miller v. Nippon Carbon Co., 528 F.3d
1087, 1090 (8th Cir. 2008). The plaintiff's prima facie
showing must be tested, not by the pleadings alone, but by
the affidavits and exhibits presented with the motions and
opposition thereto. Fastpath, 760 F.3d at 820;
Dairy Farmers, 702 F.3d at 475; Miller, 528
F.3d at 1090; Coen v. Coen, 509 F.3d 900, 904-05
(8th Cir. 2007).
Motion to Dismiss
defendant moves to dismiss, arguing that this Court lacks
personal jurisdiction over it. Filing 14. The
plaintiff contends that there is specific personal
jurisdiction over the defendant in Nebraska. Filing
22 at 5.
order to satisfy due process, a defendant must have minimum
contacts with the forum state such that the maintenance of
the suit does not offend traditional notions of fair play and
substantial justice. Pangaea, 647 F.3d at
745;see also Dairy Farmers, 702 F.3d at
477. The fundamental inquiry is whether the defendant has
purposefully availed itself of the benefits and protections
of the forum state to such a degree that it should reasonably
anticipate being haled into court there. Viasystems,
646 F.3d at 594; see also Dairy Farmers, 702 F.3d at
477. Purposeful availment is required to ensure that a
defendant will not be haled into a jurisdiction solely as a
result of random, fortuitous, or attenuated contacts, or the
unilateral activity of another party or a third person.
Stanton v. St. Jude Med., Inc., 340 ...