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ULTIMATEMEASURES, INC. v. BOHNENGEL

April 22, 2004.

ULTIMATEMEASURES, INC., et al., Plaintiffs,
v.
ANDREW C. BOHNENGEL, et al., Defendants



The opinion of the court was delivered by: DAVID COAR, District Judge

MEMORANDUM OPINION AND ORDER

On January 29, 2004, Plaintiffs UltimateMeasures, Inc., George P. Harris, and U.S. Tape Company, Inc., filed an eleven-count Complaint in this Court alleging that Defendants Andrew C. Bohnengel and the Perfect Measuring Tape Company committed various acts of fraud, conversion, unfair competition, and patent infringement relating to the manufacture of a unique tape measure. On March 8, 2004, Defendants Perfect Measuring Tape Company and Andrew Bohnengel filed a motion to dismiss the case for want of personal jurisdiction and improper venue or, in the alternative, to transfer venue to the Northern District of Ohio. Defendants' motion has now been fully briefed and is ripe for decision. For the reasons set forth in this opinion, Defendants' Motion is denied in its entirety.

I. FACTUAL BACKGROUND*fn1

  Plaintiffs in this lawsuit are UltimateMeasures, Inc., George P. Harris, and U.S. Tape Company. Plaintiff UltimateMeasures, Inc. ("UltimateMeasures") is a Florida Corporation with its principal place of business in Palm Harbor, Florida. (Comp, ¶ 1.) Plaintiff George P. Harris ("Harris") is an individual who is a resident and citizen of Florida. (Comp. ¶ 2) Plaintiff U.S. Tape Company ("U.S. Tape") is a Pennsylvania Corporation with its principal place of business in Patchogue, New York. (Comp. ¶ 3) Defendant Andrew C. Bohnengel ("Bohnengel") is an individual who is a resident and citizen of Ohio. (Comp. ¶ 4) Defendant Perfect Measuring Tape Company ("Perfect Measuring") is an Ohio Corporation with its principal and only place of business in Toledo, Ohio. (Bohnengel Aff., ¶ 2.)

  On January 3, 2002, Harris contacted Defendant Bohnengel at Perfect Tape to discuss manufacturing possibilities for an invention of his relating to tape measures. (Comp. ¶ 13.) Bohnengel suggested that Harris and Perfect Tape enter into a confidentiality agreement before Harris disclosed the invention to him. (Id.) Bohnengel faxed a confidentiality agreement to Harris that day. Also on January 3, 2002, Harris became aware that William Clontz ("Clontz") was attempting to design an oblong tape measure that would be easier to grip than traditional tape measures. (Comp. ¶ 14.)

  Harris contacted Bohnengel on January 7, 2002 about designing an oblong tape measure. (Comp. ¶ 15.) Harris faxed the confidentiality agreement back to Bohnengel at Perfect Tape on January 7, 2002. (Comp. Ex. A.) On January 12, 2002, Harris met with Clontz in North Carolina. (Comp. ¶ 17.) During their meeting, they conceived a definite and permanent idea of a "novel, oblong, retractable tape measure which fits easily in the hand", (Id.) Harris formed Plaintiff UltimateMeasures, Incorporated in January 2002 to develop the tape measure that he and Clontz had invented. (Comp. ¶ 19.) On January 13, 2002, Harris met with Bohnengel at the Toledo Airport. Harris gave details relating to the internal mechanism and the external case of the oblong-shaped tape measure that he and Clontz had invented. (Comp. ¶ 20.)

  In March 2002, Harris and UltimateMeasures entered into a development agreement with Bohnengel and Perfect Measuring. (Comp, ¶ 21.) The development agreement specified that Perfect Measuring would help create a working prototype of the oblong-shaped tape measure using a Chinese manufacturer, The Great Wall Factory ("Great Wall"), with which Perfect Measuring had an ongoing business relationship. (Comp. ¶ 21.) Perfect Measuring would also have Great Wall create one or more molds which could be used to manufacture the oblong-shaped tape measures. (Comp. ¶ 22.) UltimateMeasures paid Perfect Measuring over $8,000 for the prototype and the molds. (Comp. ¶ 26.) After the exchange of some inadequate prototypes, Perfect Measuring delivered to Harris a prototype of the oblong-shaped tape measure that embodied the invention in August 2002. (Comp. ¶ 27-28.)

  Harris and UltimateMeasures displayed the prototype of the oblong-shaped tape measure at the National Hardware Show in Chicago, Illinois, later in August 2002. (Comp. ¶ 29.) Defendant Bohnengel attended the Hardware show, and answered questions about the oblong-shaped tape measure. (Comp. ¶ 30.) After the show, UltimateMeasures agreed to buy 10,000 oblong-shaped tape measures through Perfect Measuring. (Comp, ¶ 31.) Negotiations between UltimateMeasures and Perfect Measuring to establish an exclusive manufacturing contract broke down over the price of the oblong-shaped tape measures. (Comp. ¶ 33.)

  On June 28, 2002, Bohnengel applied for a design patent covering the exterior case of the oblong-shaped tape measure. (Comp. ¶ 35.) Bohnengel was granted U.S, design patent D 473,807 (the `"807 patent"). (Id.) Shortly thereafter, Harris and Clontz applied for a design patent covering the same invention. (Comp. ¶ 37.) When Harris and Clontz learned of Bohnengel's patent, they notified the Patent and Trademark Office (PTO) and withdrew their application. (Comp. ¶ 37-38).

  In August 2003, Defendant Bohnengel attended the National Hardware Show in Chicago on behalf of Perfect Measuring. Great Wall had two adjacent booths at the 2003 Hardware Show. Among the products in the Great Wall booths was the Perfect Grip tape measure that Great Wall manufactured for Defendant Perfect Measuring. Plaintiffs assert that the Perfect Grip tape measure infringes on their intellectual property rights as it is allegedly based on the oblong-shaped tape measure that was the subject of their previous negotiations.

  Plaintiffs filed their eleven-count Complaint in this Court on January 29, 2004. Defendants' Motion presently before the Court seeks to dismiss Plaintiffs' Complaint for want of personal jurisdiction, improper venue, and/or forum non conveniens. The Court will address each issue separately below.

 II. PERSONAL JURISDICTION

  Plaintiff's Complaint in this case presents alleged violations of both federal and state law. This Court "has personal jurisdiction [over defendants] . . . `only if a court of the state in which it sits would have such jurisdiction.'" RAR. Inc. v. Turner Diesel Ltd. 107 F.3d 1272, 1275 (7th Cir. 1997)(quoting Klump v. Duffus, 71 F.3d 1368, 1371 (7th Cir. 1995)). The Court must undertake a two-step analysis to assess whether the Illinois courts would have personal jurisdiction. First, the Court must examine Illinois law to determine whether it authorizes personal jurisdiction over Defendants. If Illinois law does authorize personal jurisdiction, the Court must proceed to examine due process requirements to determine whether the Constitution permits the exercise of personal ...


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