McKeon Rolling Steel Door Co., Inc. v. U.S. Smoke and Fire Corp. et alMEMORANDUM in Opposition re MOTION to Dismiss for Lack of Jurisdiction and Improper VenueE.D.N.Y.September 20, 2017Lisa A. Ferrari (LF8081) COZEN O’CONNOR 277 Park Avenue New York, New York 10172 Tel. (212) 883-4900 Fax: (212) 986-0604 Email: lferrari@cozen.com UNITED STATES DISTRICT COURT EASTERN DISTRICT OF NEW YORK -------------------------------------------------------------X McKEON ROLLING STEEL DOOR CO., INC., Plaintiff, -against- Case No. 17-172 (LDH)(PK) U.S. SMOKE AND FIRE CORP.; U.S. SMOKE AND FIRE CURTAIN, LLC, Defendants. -------------------------------------------------------------X MEMORANDUM OF LAW CONCERNING COURT’S BRIEFING REQUEST AT PRE-MOTION CONFERENCE AND IN OPPOSITION TO DEFENDANTS’ MOTION TO DISMISS FOR IMPROPER VENUE, OR IN THE ALTERNATIVE, FOR LACK OF PERSONAL JURISDICTION Lisa A. Ferrari (LF8081) COZEN O’CONNOR 277 Park Avenue New York, New York 10172 Tel. (212) 883-4900 Fax: (212) 986-0604 Email: lferrari@cozen.com Attorneys for Plaintiff McKeon Rolling Steel Door Co., Inc. Case 1:17-cv-00172-LDH-PK Document 21 Filed 09/20/17 Page 1 of 31 PageID #: 156 i TABLE OF CONTENTS Page I. STATEMENT OF FACTS ................................................................................................. 1 II. ARGUMENT ...................................................................................................................... 5 A. The “Regular and Established Place of Business” Language in §1400(b) ......................... 6 B. Significance of the USSF Website to Jurisdiction and Venue Defenses .......................... 10 C. USSF’s Motion to Dismiss for Lack of Jurisdiction Should be Denied ........................... 12 1. USSF is Subject to General Jurisdiction Under CPLR § 301 ....................................... 14 2. Defendants Are Subject to Specific Jurisdiction Under CPLR §§ 302(a)(1), 302(a)(3)(i) and/or 302(a)(3)(ii). .................................................................................. 15 D. USSF’s Motion to Dismiss for Improper Venue Should be Denied ................................. 17 E. McKeon Should be Permitted Limited Discovery ............................................................ 18 F. Alternatively, The Action Should be Transferred to the Eastern District of Virginia ............................................................................................................................. 22 III. CONCLUSION ................................................................................................................. 23 Case 1:17-cv-00172-LDH-PK Document 21 Filed 09/20/17 Page 2 of 31 PageID #: 157 ii TABLE OF AUTHORITIES Page(s) Cases 3d Sys., Inc. v. Aarotech Labs., Inc., 160 F.3d 1373 (Fed. Cir. 1998)................................................................................................13 APWU v. Potter, 343 F.3d 619 (2d Cir. 2003).....................................................................................................19 Azrelyant v. The B. Manishewitz Co., No. 98-CV-2502 ILG, 2000 WL 264345 (E.D.N.Y. Jan. 13, 2000) .................................22, 23 Bensusan Rest. Corp. v. King, 126 F.3d 25 (2d Cir. 1997)...........................................................................................12, 13, 16 Bluestone Capital Partners, L.P. v. MGR Funds Ltd., 1999 WL 322658 (S.D.N.Y. May 20, 1999) ...........................................................................16 Boston Scientific Corp. v. Cook Grp., Inc., C.A. No. 15-980-LPS-CJB, 2017 U.S. Dist. LEXIS 146126 (D. Del. Sept. 11, 2017) ................................................................................................................................ passim Bristol-Myers Squibb Co. v. Mylan Pharma. Inc., C.A. No. 17-379-LPS, 2017 U.S. Dist. LEXIS 146372 (Sept. 11, 2017) ................9, 10, 19, 20 Burger King Corp. v. Rudzewicz, 471 U.S. 462 (1985) .................................................................................................................13 Chadeloid Chem. Co. v. Chicago Wood Finishing Co., 180 F. 770 (C.C.S.D.N.Y. 1910) .............................................................................................14 Chew v. Dietrich, 143 F.3d 24 (2d Cir. 1998).......................................................................................................13 Cooper, Robertson & Partners L.L.P. v. Vail, 143 F. Supp. 2d 367 (S.D.N.Y. 2001)......................................................................................12 In re Cordis, 769 F.2d 733 (Fed. Cir. 1985)............................................................................................6, 7, 8 Daval Steel Prods. v. M.V. Juraj Dalmatinac, 718 F. Supp. 159 (S.D.N.Y. 1989) ..........................................................................................19 Deprenyl Animal Health, Inc. v. Univ. of Toronto Innovations Found., 297 F.3d 1343 (Fed. Cir. 2002)................................................................................................12 Case 1:17-cv-00172-LDH-PK Document 21 Filed 09/20/17 Page 3 of 31 PageID #: 158 iii Dorchester Fin. Sec., Inc. v. Banco BRJ, S.A., 722 F.3d 81 (2d Cir. 2013).......................................................................................................12 Glasser v. Barboza, C.A. No. 1:17-cv-00322 (E.D. Va. Aug. 23, 2017) .................................................................11 Goldlawr v. Heiman, 369 U.S. 463 (1962) .................................................................................................................22 Gonsalves-Carvalhal v. Aurora Bank, FSB, No. 12-CV-2790 (MKB), 2014 WL 201502 (E.D.N.Y. Jan. 16, 2014) ............................17, 22 GTFM Inc. v. Int’l Basic Source, Inc., 01 Civ. 6203 (RWS), 2002 U.S. Dist. LEXIS 345 (S.D.N.Y. Jan. 11, 2002) ...................18, 19 Hollins v. U.S. Tennis Ass’n, 469 F. Supp. 2d 67 (E.D.N.Y. 2006) .......................................................................................19 Hsin Ten Enter. USA, Inc. v. Clark Enter., 138 F. Supp. 2d 449 (S.D.N.Y. 2000)..........................................................................10, 11, 15 Int’l Flavors & Fragrances Inc. v. Van Eaghen Int’l B.V., No. 06-CV-490, 2006 WL 1876671 (S.D.N.Y. July 6, 2006) ...........................................22, 23 Kranos IP Corp. v. Riddell, Inc., C.A. No. 2:17-cv-443-JRG, 2017 U.S. Dist. LEXIS 138108 (E.D. Tex. Aug. 28, 2017) ..................................................................................................................................18 LoganTree LP v. Garmin Int’l, Inc., 2017 WL 2842870 (W.D. Tex. June 22, 2017) .......................................................................11 Midwest Indus., Inc. v. Karavan Trailers, Inc., 175 F.3d 1356 (Fed. Cir. 1999)..................................................................................................6 Newbro v. Freed, No. 03 Civ. 10308 (PKC), 2004 U.S. Dist. LEXIS 5358 (S.D.N.Y. Mar. 31, 2004) ........................................................................................................................................14 Nike v. Skechers U.S.A., Inc., 2017 WL 3389022 (D. Or. June 30, 2017) ..............................................................................19 PDK Labs, Inc. v. Friedlander, 103 F.3d 1105 (2d Cir. 1997)...................................................................................................15 Prolacta Bioscience, Inc. v. Ni-Q, LLC, CV 17-04071 SJO (C.D. Cal. Aug. 7, 2017) .....................................................................11, 12 Case 1:17-cv-00172-LDH-PK Document 21 Filed 09/20/17 Page 4 of 31 PageID #: 159 iv Purdue Pharma L.P. v. Impax Labs, Inc., No. 02 Civ. 2803 (SHS), 2003 WL 22070549 (S.D.N.Y. Sept. 4, 2003) ................................14 Raytheon Co. v. Cray, Inc., C.A. No. 2:15-CV-01554-JRG, 2017 U.S. Dist. LEXIS 100887 (E.D. Tex. June 29, 2017) ..............................................................................................................7, 8, 9, 18 RegenLab USA LLC v. Estar Techs. Ltd., No. 16-CV-08771 (ALC), 2017 U.S. Dist. LEXIS 131627 (S.D.N.Y. Aug. 17, 2017) ................................................................................................................................6, 8, 19 Robinson v. Overseas Military Sales Corp., 21 F.3d 502 (2d Cir. 1994).......................................................................................................12 Steuben Foods, Inc. v. Oystar Group, No. 10-CV-780S, 2013 WL 2105894 (W.D.N.Y. May 14, 2013)...........................................13 Stone v. Chung Pei Chem. Indus. Co., 790 F.2d 20 (2d Cir. 1986).......................................................................................................12 Strategem Dev. Corp. v. Heron Int’l N.V., 153 F.R.D. 535 (S.D.N.Y. 1994) .............................................................................................19 TC Heartland LLC v. Kraft Food Grp. Brands LLC, 137 S. Ct. 1514 (2017) ...............................................................................................6, 7, 19, 23 Trintec Indus., Inc. v. Pedre Promotional Prods., Inc., 395 F.3d 1275 (Fed. Cir. 2005)................................................................................................12 Winston & Strawn v. Dong Won Secs. Co., 02 Civ. 0183 (RWS), 2002 U.S. Dist. LEXIS 20952 (S.D.N.Y. Nov. 4, 2002) ......................19 Wiwa v. Royal Dutch Petroleum Co., 226 F.3d 88 (2d Cir. 2000).......................................................................................................14 Statutes 28 U.S.C. § 1391(c) .........................................................................................................................6 28 U.S.C. § 1400(b) ............................................................................................................... passim 28 U.S.C. § 1404(a) .......................................................................................................................23 28 U.S.C. § 1406(a) .................................................................................................................22, 23 35 U.S.C. § 271(a) .........................................................................................................................16 Case 1:17-cv-00172-LDH-PK Document 21 Filed 09/20/17 Page 5 of 31 PageID #: 160 v Other Authorities CPLR § 301........................................................................................................................13, 14, 15 CPLR § 302....................................................................................................................................13 CPLR § 302(a)(1) ..........................................................................................................................15 CPLR §302(a)(2) .....................................................................................................................16, 20 CPLR § 302(a)(3)(i) .......................................................................................................................16 CPLR § 302(a)(3)(ii)................................................................................................................16, 17 Fed. R. Civ. P. 12(b)(2)..............................................................................................................1, 13 Fed. R. Civ. P. 12(b)(3)....................................................................................................................1 Case 1:17-cv-00172-LDH-PK Document 21 Filed 09/20/17 Page 6 of 31 PageID #: 161 LEGAL\32538324\1 14691.0001.000/399137.000 Plaintiff McKeon Rolling Steel Door Co., Inc. (“plaintiff” or “McKeon”) submits this Memorandum of Law (“Memo of Law”) in response to the request of the Court at the August 9, 2017, pre-motion conference for briefing on the issues of (1) the legal significance of defendants’ website to the personal jurisdiction and venue defenses asserted by defendants; and (2) the proper interpretation of the phrase “regular and established place of business” in 28 U.S.C. § 1400(b). This Memo of Law also opposes the motion of defendant U.S. Smoke and Fire Corp. (”USSF”) [Dkt No. 18] to dismiss the Complaint for improper venue pursuant to Fed. R. Civ. P. 12(b)(3), or in the alternative, for lack of personal jurisdiction pursuant to Fed. R. Civ. P. 12(b)(2).1 In the event that the Court concludes that plaintiff has not established a prima facie case of jurisdiction and venue in response to defendants’ motion, McKeon requests that limited discovery be permitted, including the service of document requests and the taking of a corporate deposition. I. STATEMENT OF FACTS McKeon, headquartered in Bellport, New York, manufactures and sells commercial and special purpose doors, including fire and security door and curtain systems. Complaint [Dkt No. 1] ¶¶ 1, 7. McKeon is the owner, by assignment, of all right, title and interest in and to U.S. Patent No. 9,440,100 (the ‘100 Patent), which issued September 13, 2016. Declaration of Andrew C. Lambridis (“Lambridis Dec.”) ¶ 2, Ex. A. Andrew Lambridis, McKeon’s Senior Vice President, is the named inventor on the ‘100 Patent. Id. ¶ 1. The ‘100 Patent, titled “Fire And/Or Smoke Blocking Device,” is directed to a moveable fire curtain with emergency egress. Id. ¶ 2. The invention relates generally to a fire and/or smoke blocking device for selectively covering an opening in a wall, and particularly to a fire curtain assembly with an egress for allowing passage therethrough when the wall opening is covered by 1 Steven Sadeghian, the principal of co-defendant U.S. Smoke and Fire Curtain, LLC (“LLC” and, together with USSF, “defendants”), has submitted a Declaration [Dkt No. 20] stating that LLC ceased operations in 2011 and ceased to exist in 2015; accordingly, plaintiff does not oppose a dismissal without prejudice of the Complaint against LLC. Case 1:17-cv-00172-LDH-PK Document 21 Filed 09/20/17 Page 7 of 31 PageID #: 162 2 LEGAL\32538324\1 14691.0001.000/399137.000 the fire curtain assembly. See id. The fire curtain assembly includes first and second panel portions with mutually opposing edge portions. See id. A fastener attaches the first and second portions to each other. See id. The first and second panel portions are separable from each other to allow egress through the opening in response to an egress force. See id. The panel portions return to the closed position after removal of the egress force. See id. McKeon filed this patent infringement action against defendants on January 12, 2017. Complaint [Dkt No. 1]. McKeon had contacted USSF’s principal, Steven Sadeghian, multiple times prior to the issuance of the patent to inform him that the fire curtains displayed on the website www.ussmokeandfirecurtain.com (the “USSF Website”) would be an infringement once the patent issued. See Lambridis Dec. ¶ 5. Sadeghian ignored McKeon and continued to offer the accused products for sale. Id. ¶ 3. USSF promotes itself as a “nationally and internationally recognized supplier of Smoke and Fire Curtains,” with “products . . . on display in leading institutions across the globe.” Complaint, Ex. D [Dkt 1-5], at 8 (Excerpt from defendants’ website). An entire section of the USSF Website is accessed by a link to “Nationwide,” as in www.ussmokeandfirecurtain.com/nationwide. See Lambridis Dec. ¶ 14, Ex. H. As of the date that the Complaint was filed, the USSF Website displayed the accused products, the SD240GS Swing Door and the SD240GSM with ADA Accessible Means of Egress. Complaint, Ex. D [Dkt. No. 1-5]. Videos of the products in operation were shown on YouTube links posted on the USSF Website. See Lambridis Dec. ¶ 4, Ex. B (still shots of said videos). Although USSF claimed that it subsequently removed all references to the accused products from the USSF Website, that is not true. Attached as Ex. C to the Lambridis Declaration is a copy of a so-called “cut sheet” or specification sheet currently available on the USSF Website as a “Product Download.” The title of the cut sheet - “SD240GSM Specification . . . With ADA Case 1:17-cv-00172-LDH-PK Document 21 Filed 09/20/17 Page 8 of 31 PageID #: 163 3 LEGAL\32538324\1 14691.0001.000/399137.000 Accessible Means of Egress” - is the model number accused in the Complaint [Dkt No. 1] ¶ 13 of patent infringement.2 The photograph in the cut sheet - of a man in a wheelchair coming through the lifted flap on the fire curtain - is a photograph of the accused product, showing, inter alia, “a movable flap” in the assembly, and appearing to contain “a first fastener . . . extending along an entire length of the moveable flap,” and “a second fastener fixed to the egress edge of the moveable flap,” where “the first and second fasteners separate and the moveable flap folds away from the closed position in response to an egress force . . . to form an egress through the fire door assembly,” as called for in Claim 19 of the ‘100 Patent. See Lambridis Dec., Ex. A (‘100 Patent). The text of the cut sheet confirms the presence of the fasteners as called for by at least Claim 19 of the ‘100 Patent: With this system there is a 4” magnetic strip between the two curtain panels. An occupant will be able to escape to safety by pushing open one panel of the curtain. After exiting, the panel will close back to original location via the magnets sewn into the lead edge. Id., Ex. C, at page 3. Furthermore, at the end of the specification, below the information concerning USSF’s Reston, Virginia headquarters, are listed six cities: Washington, D.C., Boston, New York, Miami, Dallas and San Francisco. See id., Ex. C, at page 4. These six cities are identified in this manner on at least four other cut sheets available on the USSF Website. See id. ¶ 8. The obvious import of this list is that USSF maintains offices in these six cities, one of which is New York. Id. Indeed, McKeon’s letterhead, listing its offices in California, Nevada, New York, Utah and Washington, D.C., is presented the same way and, according to Andrew Lambridis, is typical in the industry for indicating office locations. Id., Ex. P. Thus, as of the date of defendants’ motion to dismiss, USSF continues to engage in advertising and promoting the accused products on the USSF Website and 2 Upon information and belief, the cut sheet was available on the USSF Website as of the date of the filing of the Complaint. Lambridis Dec. ¶ 7. Case 1:17-cv-00172-LDH-PK Document 21 Filed 09/20/17 Page 9 of 31 PageID #: 164 4 LEGAL\32538324\1 14691.0001.000/399137.000 to consumers in New York State. See id. ¶ 7 (confirming that the USSF Website is accessible in Eastern District of New York). Additionally, the USSF Website contains multiple references to USSF’s presence in New York and projects completed by USSF in New York City. The website rotates among photographs and information concerning various projects touted by USSF which, although not involving the accused products, includes work completed at Adelphi University on Long Island, and Columbia University, World Financial Center, Beekman Hotel, Brookfield Place, and the H&M Flagship 5th Avenue store in Manhattan, and in connection with “the Ground Zero Reconstruction.” Id. ¶¶ 10- 13, 17, Exs. D-G, M. Also, the website directs users to various links “In Your Area.” Id. ¶ 14, Ex. H at 2. In this section, appearing throughout the website, users can access links to “Fire Curtains New York City,” “Smoke Curtains New York,” and “Certified Fire Protection Curtains New York.” Id. Upon linking to these pages, the user is shown, in large block letters, the titles “LEADING PROVIDER OF FIRE CURTAINS AROUND NEW YORK,” “TOP PROVIDER OF SMOKE CURTAINS IN NEW YORK,” and “LEADING PROVIDER OF FIRE CURTAINS IN NEW YORK CITY,” which contain further descriptions of USSF’s capabilities. Id., Exs. J, Q. In addition, USSF’s CEO, Steven Sadeghian, has made presentations to the architectural community in New York City, including to HOK and Kohn Pedersen Fox in Manhattan, promoting USSF’s work at World Financial Center and elsewhere, and has worked with Arup, a New York City-based architectural and engineering consulting company. Id. ¶ 16, Ex. L. Sadeghian even wrote to a McKeon representative in Bellport before the current dispute promoting the work that defendants were doing at World Financial Center and seeking a working relationship with McKeon. Id. ¶ 17, Ex. M. USSF admits to having offered the accused product for sale to a customer in Buffalo, New York prior to the issuance of the ‘100 Patent, but states that the accused product was never sold or Case 1:17-cv-00172-LDH-PK Document 21 Filed 09/20/17 Page 10 of 31 PageID #: 165 5 LEGAL\32538324\1 14691.0001.000/399137.000 delivered. Id. ¶ 18, Ex. N. Yet, USSF entered a contract for this product on June 19, 2015, and did not cancel the contract until on or about January 18, 2017, nearly two years after entering the contract and four months after McKeon’s ‘100 Patent issued. Id. Also, prior to the issuance of the ‘100 Patent, USSF submitted a proposal to Columbia University in Manhattan to supply the accused product, but did not obtain the work. Id. ¶ 19. II. ARGUMENT After the date of the pre-motion conference, McKeon learned that USSF continues to promote the accused product on the USSF Website. That is in addition to representations throughout the website that USSF maintains an office in New York and has completed a substantial number of projects in New York City. Although the minimally interactive nature of the website cannot support personal jurisdiction or venue on its own, the nature of the website, and the information presented on it, in combination with the other available evidence, weigh in favor of denying USSF’s motion to dismiss. As for the “regular and established place of business” prong of section 1400(b), it is clear that a fixed physical presence in the sense of an office or store is not required, though some physical presence in the nature of employees, products, or product literature is required. USSF’s purposeful presence in New York and its solicitation and performance of projects in New York warrant the denial of USSF’s motion to dismiss for lack of personal jurisdiction. Given the available evidence on venue, USSF’s motion to dismiss for improper venue should be denied and McKeon should be permitted to serve document requests and take a deposition on this issue. Alternatively, the Court should transfer the action to the Eastern District of Virginia, where it could have been brought. Case 1:17-cv-00172-LDH-PK Document 21 Filed 09/20/17 Page 11 of 31 PageID #: 166 6 LEGAL\32538324\1 14691.0001.000/399137.000 A. The “Regular and Established Place of Business” Language in §1400(b) Venue in a patent infringement action is governed solely by the patent venue statute, 28 U.S.C. § 1400(b). TC Heartland LLC v. Kraft Food Grp. Brands LLC, 137 S. Ct. 1514 (2017). The general venue statute, 28 U.S.C. § 1391(c), is not applicable. Id. at 1519. The first prong of section 1400(b) authorizes venue “where the defendant resides,” which had previously been interpreted to mean wherever the defendant was subject to personal jurisdiction. See id. TC Heartland held that a corporate defendant “resides” only in its state of incorporation. Id. at 1517. The Court did not discuss the second prong of section 1400(b), which authorizes venue in any district “where the defendant has committed acts of infringement and has a regular and established place of business.” It is this latter part of section 1400(b) - the “regular and established place of business” language - on which the Court requested briefing. Issues concerning the interpretation of section 1400(b), a patent-specific statute, are controlled by Federal Circuit law. Midwest Indus., Inc. v. Karavan Trailers, Inc., 175 F.3d 1356, 1359 (Fed. Cir. 1999). Yet, because of the previously broader interpretation of the “residing” language in section 1400(b), “few courts - until recently - have had occasion to rely on the second prong of § 1400(b) and to address how to determine whether a defendant has a regular and established place of business.” Boston Scientific Corp. v. Cook Grp., Inc., C.A. No. 15-980-LPS- CJB, 2017 U.S. Dist. LEXIS 146126, *26 (D. Del. Sept. 11, 2017); see RegenLab USA LLC v. Estar Techs. Ltd., No. 16-CV-08771 (ALC), 2017 U.S. Dist. LEXIS 131627, *6 (S.D.N.Y. Aug. 17, 2017) (“[t]o the extent courts addressed the second prong of § 1400(b), the jurisprudence is rather rudderless”). The Federal Circuit’s 1985 decision in In re Cordis, 769 F.2d 733 (Fed. Cir. 1985), “marks the most recent, precedential case applying the ‘regular and established place of business’ prong of § 1400(b).” Boston Scientific Corp., 2017 U.S. Dist. LEXIS 146126, at *27. The plaintiff in Cordis, 769 F.2d at 735, sued a pacemaker business for patent infringement in Minnesota. The Case 1:17-cv-00172-LDH-PK Document 21 Filed 09/20/17 Page 12 of 31 PageID #: 167 7 LEGAL\32538324\1 14691.0001.000/399137.000 defendant was incorporated and had its principal place of business in Florida. The defendant did not own or rent other property in Minnesota, nor was it registered to do business in the State. The defendant engaged a secretarial service in the district and employed two sales representatives who worked out of home offices. The sales representatives maintained approximately $90,000 of inventory in their homes, which they provided directly to customers; the sales representatives also served as technical consultants for users of the product in Minnesota. See id. As did the defendants at the pre-motion conference in this case, the defendant in Cordis invoked the lack of a physical location in Minnesota as dispositive of whether defendant had a “regular and established place of business.” Id. at 736. The Federal Circuit rejected this argument, holding that “in determining whether a corporate defendant has a regular and established place of business in a district, the appropriate inquiry is whether the corporate defendant does its business in that district through a permanent and continuous presence there and not . . . whether it has a fixed physical presence in the sense of a formal office or store.” Id. at 737. At least two district judges in districts likely to be significantly affected by TC Heartland have issued recent opinions reviewing the cases and providing guidance on the determination of whether a defendant has a regular and established place of business for purposes of section 1400(b). In Raytheon Co. v. Cray, Inc., C.A. No. 2:15-CV-01554-JRG, 2017 U.S. Dist. LEXIS 100887, at *32 (E.D. Tex. June 29, 2017), Judge Rodney Gilstrap set forth a four-factor framework for determining whether a defendant had a regular and established place of business: (1) “the extent to which a defendant has a physical presence in the district, including but not limited to property, inventory, infrastructure, or people” (id. at *32); (2) “the extent to which a defendant represents, internally or externally, that it has a presence in the district” (id. at *33-34); (3) “the extent to which a defendant derives benefits from its presence in the district, including but not limited to sales revenue” (id. at *35); and (4) “the extent to which a defendant interacts in a targeted way Case 1:17-cv-00172-LDH-PK Document 21 Filed 09/20/17 Page 13 of 31 PageID #: 168 8 LEGAL\32538324\1 14691.0001.000/399137.000 with existing or potential customers, consumers, users, or entities within a district, including but not limited to through localized customer support, ongoing contractual relationships, or targeted marketing efforts” (id. at *35). Judge Gilstrap formulated a “tailored set of factors promoting administrative simplicity, but remaining flexible enough to encompass future developments in technology.” Id. at *29. With respect to the first prong, whether the defendant has a physical presence in the district, based on its review of Cordis and other cases, the Court was “persuaded that a fixed physical location in the district is not a prerequisite to proper venue” and that “[o]ther forms of physical presence may also help support a finding of a regular and established place of business.” Id. at *33; see also RegenLab USA LLC, 2017 U.S. Dist. LEXIS 131627, at *9 (stating “that the lack of a defendant-owned or controlled property in the district is not always dispositive” of whether defendant has regular and established place of business). With respect to the second prong, the Court quoted from a patent law opinion of Judge Learned Hand in which the Court found that the defendant had accepted its New York representative’s office as one of its own places of business based on, among other things, the advertising that defendant engaged in regarding the New York location and the fact that the defendant expected customer inquiries to be directed to the New York agent. See Raytheon Co., 2017 U.S. Dist. LEXIS 100887, at *34 (citing Chadeloid Chem. Co. v. Chicago Wood Finishing Co., 180 F. 770, 771 (C.C.S.D.N.Y. 1910)). Judge Hand concluded that based on the defendant’s own advertising and the representations that the defendant allowed the representative to make to the effect that he was the defendant’s Eastern agent, “‘[the defendant] cannot with a good grace now deny that they had any business in the East at all, merely because most of their sales were concluded [elsewhere].’” Id. (quoting Chadeloid Chem Co., 180 F. at 771). Case 1:17-cv-00172-LDH-PK Document 21 Filed 09/20/17 Page 14 of 31 PageID #: 169 9 LEGAL\32538324\1 14691.0001.000/399137.000 Concerning the fourth prong set out in Raytheon, targeted interactions with the district, Judge Gilstrap noted that a defendant “may seek to promote its brand strength and business goodwill by targeting particular communities in the district, with or without generating concurrent revenue,” and that such efforts “may include localized marketing or sponsorships intended to promote the business.” Id. at *36. Synthesizing the factors he had articulated, Judge Gilstrap concluded that venue was appropriate in the case before him based on: (1) the defendant’s employment of two sales representatives in the district, (2) the sale of an accused product (a supercomputer) to a location outside the district, but accessed via remote terminals at two locations within the district, and (3) offers for sale within the district. See id. at *2-3, 37. Chief Judge Stark of the District of Delaware shortly thereafter issued decisions in Boston Scientific Corp., 2017 U.S. Dist. LEXIS 146126, and Bristol-Myers Squibb Co. v. Mylan Pharma. Inc., C.A. No. 17-379-LPS, 2017 U.S. Dist. LEXIS 146372 (Sept. 11, 2017), also analyzing the “regular and established place of business” prong of section 1400(b). Based on a review of the cases, Judge Stark concluded: (1) “doing business in a district or being registered to do business in a district is insufficient, without more, to make that district a regular and established place of business for any particular entity” (Boston Scientific Corp., 2017 U.S. Dist. LEXIS 146126, at *33; Bristol-Myers Squibb Co., 2017 U.S. Dist. LEXIS 146372, at *39-30); (2) “demonstrating that a business entity has sufficient ‘minimum contacts’ with a district for purposes of personal jurisdiction does not necessarily mean that the entity has a regular and established place of business in the district” (Boston Scientific Corp., 2017 U.S. Dist. LEXIS 146126, at *34; Bristol-Myers Squibb Co., 2017 U.S. Dist. LEXIS 146372, at *40); (3) “maintaining a website that allows consumers to purchase a defendant’s products within the district does not, by itself, demonstrate that the defendant has a regular and established place of business” (Boston Scientific Corp., 2017 U.S. Dist. LEXIS 146126, at *34-35; Bristol-Myers Squibb Co., 2017 U.S. Dist. LEXIS 146372, Case 1:17-cv-00172-LDH-PK Document 21 Filed 09/20/17 Page 15 of 31 PageID #: 170 10 LEGAL\32538324\1 14691.0001.000/399137.000 at *41); and (4) “a regular and established place of business does not arise solely from a defendant simply shipping goods into a district - whether to an individual or for distribution by third parties” (Boston Scientific Corp., 2017 U.S. Dist. LEXIS 146126, at *36; Bristol-Myers Squibb Co., 2017 U.S. Dist. LEXIS 146372, at *42). Judge Stark concluded in Boston Scientific Corp., 2017 U.S. Dist. LEXIS 146126, at *38- 39, that venue was improper where one defendant had no physical facilities or corporate offices in Delaware, and no employees based in Delaware, and the other defendant had sales in Delaware, employed sales representatives who did not live in Delaware but called on customers there, and had one employee who previously lived in Delaware for a short time but no longer did. In Bristol- Myers Squibb Co., 2017 U.S. Dist. LEXIS 146372, at *45, 49-50, Judge Stark denied the motion without prejudice and ordered limited venue-related discovery where the defendant, Mylan Pharmaceuticals, had no manufacturing plants, corporate offices, facilities, real property, telephone listings, mailing addresses, or employees in Delaware, but was registered to do business in Delaware, was a frequent litigant in Delaware courts, sold products in Delaware, and was part of a family of companies with a nationwide and global footprint. Based on the foregoing, and as discussed infra, USSF’s motion to dismiss for improper venue should be denied and McKeon should be permitted to take limited discovery on the issue. B. Significance of the USSF Website to Jurisdiction and Venue Defenses With respect to the legal significance of the USSF Website, “personal jurisdiction over a defendant is not appropriate simply because the defendant maintains a website which residents of New York may visit.” Hsin Ten Enter. USA, Inc. v. Clark Enter., 138 F. Supp. 2d 449, 456 (S.D.N.Y. 2000) (citing Bensusan Rest. Corp. v. King, 126 F.3d 25, 27 (2d Cir. 1997)). Courts have identified an array of fact patterns, from “passive” websites at the lower end of the spectrum, which make information available but do not permit an exchange of information, to cases where Case 1:17-cv-00172-LDH-PK Document 21 Filed 09/20/17 Page 16 of 31 PageID #: 171 11 LEGAL\32538324\1 14691.0001.000/399137.000 the defendant clearly does business over the Internet, such as transmitting files to customers. See Hsin Ten Enter. USA, Inc., 138 F. Supp. 2d at 456. In the middle ground are “interactive” websites, which permit the exchange of information between the defendant and website viewer. See id. “Generally, an interactive website supports a finding of personal jurisdiction over the defendant.” Id. (finding personal jurisdiction over defendant which, in addition to selling products at trade shows and similar locations in New York, maintained interactive website which enabled viewer to purchase product online, download order form, download application to become affiliate, and ask questions of online representative). With respect to the issue of venue, as noted supra, a website that allows consumers to purchase a defendant’s products “within the district does not, by itself, demonstrate that the defendant has a regular and established place of business.” Boston Scientific Corp., 2017 U.S. Dist. LEXIS 146126, at *35 (citing Nike v. Skechers U.S.A., Inc., 2017 WL 3389022, *2 (D. Or. June 30, 2017)); LoganTree LP v. Garmin Int’l, Inc., 2017 WL 2842870, *2 (W.D. Tex. June 22, 2017)); see Hsin Ten Enter. USA, Inc., 138 F. Supp. 2d at 460 (holding that defendant’s interactive website and other New York contacts were insufficient to qualify as “regular and established place of business” under section 1400(b)). Yet, defendants’ reliance on post-TC Heartland cases involving venue are of little assistance here. In LoganTree LP, 2017 WL 2842870, the website allowed viewers to access local distributors but, unlike here, had no interactive element whereas users of defendants’ website can fill out a form to describe their project and request additional information. In Glasser v. Barboza, C.A. No. 1:17-cv-00322 (E.D. Va. Aug. 23, 2017) (Ex. C to Defendants’ Memo of Law), the defendant did not have its own website, but made its products available on Amazon.com, and so the Court’s determination that selling products in the Amazon marketplace is not sufficient to create a regular and established place of business is of little usefulness. Also, in Prolacta Case 1:17-cv-00172-LDH-PK Document 21 Filed 09/20/17 Page 17 of 31 PageID #: 172 12 LEGAL\32538324\1 14691.0001.000/399137.000 Bioscience, Inc. v. Ni-Q, LLC, CV 17-04071 SJO (C.D. Cal. Aug. 7, 2017) (Ex. A to Defendants’ Memo of Law), the plaintiff argued that the residence of defendant’s CEO in the district established venue; the website was discussed in terms of whether it established acts of infringement in the district, not whether it constituted a regular and established place of business. Based on the foregoing, and as discussed infra, the USSF Website is not totally a passive one as defendants’ claim. Given the nature of the website and the fact that USSF continues to promote the accused product on the website to users in the Eastern District of New York, McKeon should be permitted to take limited discovery on the issue of venue. C. USSF’s Motion to Dismiss for Lack of Jurisdiction Should be Denied To survive a motion to dismiss in the absence of discovery, a plaintiff need only make a prima facie showing of jurisdiction. Trintec Indus., Inc. v. Pedre Promotional Prods., Inc., 395 F.3d 1275, 1282 (Fed. Cir. 2005); Robinson v. Overseas Military Sales Corp., 21 F.3d 502, 507 (2d Cir. 1994); Stone v. Chung Pei Chem. Indus. Co., 790 F.2d 20, 22 (2d Cir. 1986) (internal citation omitted) (plaintiff “need make only a prima face showing of jurisdiction through its affidavits and supporting materials”); Dorchester Fin. Sec., Inc. v. Banco BRJ, S.A., 722 F.3d 81, 84 (2d Cir. 2013) (“[p]rior to discovery, a plaintiff challenged by a jurisdiction testing motion may defeat the motion by pleading in good faith, legally sufficient allegations of jurisdiction”). Without discovery, a court must resolve all factual disputes in the plaintiff’s favor. Deprenyl Animal Health, Inc. v. Univ. of Toronto Innovations Found., 297 F.3d 1343, 1347 (Fed. Cir. 2002); Cooper, Robertson & Partners L.L.P. v. Vail, 143 F. Supp. 2d 367, 370 (S.D.N.Y. 2001) (internal citation omitted). In assessing whether personal jurisdiction is authorized, the court must look first to the long-arm statute of the forum state. Bensusan Rest. Corp., 126 F.3d at 27. If the exercise of jurisdiction is appropriate under that statute, the court must decide whether such exercise comports Case 1:17-cv-00172-LDH-PK Document 21 Filed 09/20/17 Page 18 of 31 PageID #: 173 13 LEGAL\32538324\1 14691.0001.000/399137.000 with due process. Id. In patent infringement cases, “when analyzing personal jurisdiction for purposes of compliance with federal due process, Federal Circuit law, rather than regional circuit law, applies.” 3d Sys., Inc. v. Aarotech Labs., Inc., 160 F.3d 1373, 1377 (Fed. Cir. 1998). Under New York’s long-arm statute, a non-resident defendant may be subject to either general or specific jurisdiction (NY CPLR §§ 301, 302). See Steuben Foods, Inc. v. Oystar Group, No. 10-CV-780S, 2013 WL 2105894, *6 (W.D.N.Y. May 14, 2013). A court may assert general jurisdiction over a corporation to hear any claim against it “where the corporation’s affiliations with the state are so continuous and systematic as to render them essentially at home in the forum [s]tate. Id. (internal citation omitted). Specific jurisdiction exists “where there is a link between the forum and the underlying controversy.” Id. With respect to due process, the assertion of personal jurisdiction is permissible where the State “has ‘certain minimum contacts . . . such that the maintenance of the suit does not offend ‘traditional notions of fair play and substantial justice.’” Chew v. Dietrich, 143 F.3d 24, 28 (2d Cir. 1998) (original alterations and citations omitted). “[W]here the defendant ‘deliberately’ has engaged in significant activities within a State . . . he manifestly has availed himself of the privilege of conducting business there, and because his activities are shielded by ‘the benefits and protections’ of the forum’s laws it is presumptively not unreasonable to require him to submit to the burdens of litigation in that forum as well.” Burger King Corp. v. Rudzewicz, 471 U.S. 462, 475-76 (1985). McKeon alleges that this Court has personal jurisdiction over USSF on the basis of both general jurisdiction and specific jurisdiction. “Because a motion to dismiss pursuant to Rule 12(b)(2) based on lack of personal jurisdiction is ‘inherently a matter requiring the resolution of factual issues outside of the pleadings . . . all pertinent documentation submitted by the parties may Case 1:17-cv-00172-LDH-PK Document 21 Filed 09/20/17 Page 19 of 31 PageID #: 174 14 LEGAL\32538324\1 14691.0001.000/399137.000 be considered in deciding the motion.’” Newbro v. Freed, No. 03 Civ. 10308 (PKC), 2004 U.S. Dist. LEXIS 5358, at *3 (S.D.N.Y. Mar. 31, 2004) (internal citation omitted). 1. USSF is Subject to General Jurisdiction Under CPLR § 301 Under New York’s general jurisdiction statute, CPLR § 301, “[a] court may exercise . . . jurisdiction over persons, property, or status as might have been exercised heretofore.” A foreign corporation is subject to general jurisdiction where it does business in New York “not occasionally or casually, but with a fair measure of permanence and continuity.” Wiwa v. Royal Dutch Petroleum Co., 226 F.3d 88, 95 (2d Cir. 2000). Although solicitation of business in New York will not justify a finding of a corporate presence, “if the solicitation is substantial and continuous, and defendant engages in other activities of substance in the state, then personal jurisdiction may be found to exist.” Purdue Pharma L.P. v. Impax Labs, Inc., No. 02 Civ. 2803 (SHS), 2003 WL 22070549, *2 (S.D.N.Y. Sept. 4, 2003) (defendant’s revenues in New York, which were 3.61% of defendant’s total revenues, found to be substantial and continuous for purposes of general jurisdiction where combined with sales calls and other communications with customers, and advertising and marketing efforts directed at New York). Because USSF’s contacts with New York State are substantial and constitute significantly more than “occasional” or “casual” business in New York, the assertion of general jurisdiction meets the standards of New York’s long-arm statue and comports with due process. USSF promotes itself on the USSF Website as having a corporate presence in New York and as Judge Hand held so long ago, it cannot now deny that assertion, “merely because most of their sales were concluded [elsewhere].’” Chadeloid Chem Co., 180 F. at 771. USSF has supplied goods and/or services to multiple New York-based projects, which are prominently called out on the USSF Website: Adelphi University, Columbia University, Beekman Place, World Financial Center, H&M Flagship store, and the “Ground Zero reconstruction.” It lists six locations around Case 1:17-cv-00172-LDH-PK Document 21 Filed 09/20/17 Page 20 of 31 PageID #: 175 15 LEGAL\32538324\1 14691.0001.000/399137.000 the U.S., New York being one of them, and conveys to the website user that USSF maintains an office in these locations. The website promotes USSF as a “LEADING PROVIDER OF FIRE CURTAINS AROUND NEW YORK,” a “TOP PROVIDER OF SMOKE CURTAINS IN NEW YORK” and a “LEADING PROVIDER OF FIRE CURTAINS IN NEW YORK CITY.” USSF also targets its business development efforts in New York in the form of presentations to New York-based architectural and consulting firms such as HOK and Kohn Pedersen Fox, and work with Arup, a New York-based architectural and engineering consultancy firm. USSF cites to its lack of real property, bank accounts, and registration to do business, but these absences are dwarfed by the substantial performance and solicitation of work in New York in which USSF engages. USSF states that its 2016 revenues in the state were 3.55 percent of its total revenues, but in combination with other indicia of USSF’s presence in New York, that is sufficient to assert general jurisdiction. See, e.g., Purdue Pharma L.P., 2003 WL 22070549. In sum, USSF’s substantial promotion, solicitation and transaction of business in New York make the assertion of general jurisdiction under CPLR § 301 appropriate and, as discussed infra, comports with the requirements of due process. 2. Defendants Are Subject to Specific Jurisdiction Under CPLR §§ 302(a)(1), 302(a)(3)(i) and/or 302(a)(3)(ii). CPLR § 302(a)(1) authorizes jurisdiction over a non-domiciliary defendant who “’in person or through an agent . . . transacts any business within the state’ as long as the cause of action arises out of the defendant’s New York transaction.” PDK Labs, Inc. v. Friedlander, 103 F.3d 1105, 1109 (2d Cir. 1997). “To determine whether a party has ‘transacted business’ in New York, courts must look at the totality of the circumstances concerning the party’s interactions with, and activities within, the state.” Hsin Ten Enter. USA, Inc., 138 F. Supp. 2d at 455. However, section 302(a)(1) “is a ‘single act statute,’” meaning that “proof of one transaction in New York is Case 1:17-cv-00172-LDH-PK Document 21 Filed 09/20/17 Page 21 of 31 PageID #: 176 16 LEGAL\32538324\1 14691.0001.000/399137.000 sufficient to invoke jurisdiction, even though the defendant never enters New York provided that the cause of action arises out of the defendant’s New York transactions and the defendant’s activities in New York are purposeful.” Bluestone Capital Partners, L.P. v. MGR Funds Ltd., 1999 WL 322658, *4 (S.D.N.Y. May 20, 1999). USSF is subject to specific jurisdiction under CPLR § 302(a)(1) based upon its purposeful transaction of business in the State of New York and the contract for sale with the customer in Buffalo. In addition to a broad array of promotional efforts and projects in New York State, USSF admits to having entered a contract to supply the accused product to a contractor in the Buffalo, New York area. See Sadeghian Dec. ¶ 27; Lambridis Dec., Ex. N. Regardless of USSF’s claim to have cancelled the contract two years later, the contract for an accused product was a valid contract, in existence at the time the Complaint was filed, and, upon information and belief, at least partially performed in New York State.3 Because it is a contract for the accused product, there is indisputably a sufficient nexus between the business transacted and plaintiff’s cause of action. USSF thus had engaged in a single act of patent infringement - the sale of an infringing product - - as of the filing date of the Complaint, and the exercise of specific jurisdiction is therefore appropriate. For similar reasons, USSF is subject to jurisdiction under CPLR § 302(a)(3)(i) or (ii), which concern the commission of a tortious act without New York State. In making an offer for sale and sale to a customer in Buffalo for the accused product, USSF committed a tortious act - patent infringement. See 35 U.S.C. § 271(a) (“whoever without authority . . . . offers to sell, or sells any patented invention, within the United States . . ., infringes the patent”). If the tort occurred 3 USSF has not identified where the negotiations for the accused product were conducted, where the contract was entered, and what visits, interactions, and partial performance took place during the nearly two years that the contract was in effect. Cf. Bensusan Rest. Corp., 126 F.3d at 28 (New York law requires defendant to “be physically present in New York” for purposes of CPLR §302(a)(2)). As set forth infra, these matters would be appropriate for limited jurisdictional discovery in the event that jurisdiction over USSF is not otherwise found. Case 1:17-cv-00172-LDH-PK Document 21 Filed 09/20/17 Page 22 of 31 PageID #: 177 17 LEGAL\32538324\1 14691.0001.000/399137.000 outside the State of New York, personal jurisdiction over USSF under CPLR § 302(a)(3)(i) or (ii) would be appropriate because, for the reasons discussed above, USSF “regularly does or solicits business . . . in the state” and because USSF “expects or should reasonably expect the act to have consequences in the state and derives substantial revenue from interstate or international commerce.” Nor would it offend due process to assert jurisdiction over USSF in this case. Even though USSF resides outside the State of New York, it has purposefully directed its business activities to consumers in New York, and has availed itself of the benefits of doing business in New York State. USSF maintains a website touting and promoting its work in New York and enabling users in New York to seek information concerning USSF’s products, including the accused product. Given USSF’s presence in New York, its work in New York with architects, consultants, universities, shopping malls, retail outlets, and hotels, and its substantial efforts to obtain more of such business, it is not at all unreasonable for USSF to expect to be hauled into court in New York State to defend its actions in this patent infringement suit. For these reasons, jurisdiction over USSF comports with traditional notions of fair play and substantial justice, and USSF’s motion to dismiss for lack of personal jurisdiction should be denied. D. USSF’s Motion to Dismiss for Improper Venue Should be Denied As with jurisdiction, “at the motion to dismiss stage, where the Court relies only on pleadings and affidavits, the plaintiff need only make a prima facie showing of venue.” Gonsalves- Carvalhal v. Aurora Bank, FSB, No. 12-CV-2790 (MKB), 2014 WL 201502, *3 (E.D.N.Y. Jan. 16, 2014) (internal citation omitted). Similarly, in determining this issue, the Court must “view all the facts in a light most favorable to plaintiff.” Id. With respect to acts of patent infringement as required under section 1400(b), USSF continues to promote the accused product on a website accessible by users in the Eastern District Case 1:17-cv-00172-LDH-PK Document 21 Filed 09/20/17 Page 23 of 31 PageID #: 178 18 LEGAL\32538324\1 14691.0001.000/399137.000 of New York and interactive to the extent of allowing users to provide information to USSF about their project and request information from USSF. USSF also has represented to the users in the Eastern District that the SD240GSM with ADA Accessible Means of Egress is available at USSF’s offices in New York and in five other U.S. cities. Although by itself not sufficient to show that the Eastern District is a place where “defendant has committed acts of infringement,” it is “a sufficient start,” as discussed infra, to warrant limited discovery. With respect to a “regular and established place of business under section 1400(b),” the evidence of record suggests that at least three of Judge Gilstrap’s Raytheon factors have been met. USSF has clearly represented to the public on the USSF Website that it has an office in New York, which of course, could include the Eastern District of New York. Cf. Kranos IP Corp. v. Riddell, Inc., C.A. No. 2:17-cv-443-JRG, 2017 U.S. Dist. LEXIS 138108, at *12 (E.D. Tex. Aug. 28, 2017) (“defendant should not be permitted to portray itself as a local provider or local business, then deny such representations when they become inconvenient”). USSF has indicated that it has received benefits in the State of New York in the form of sales revenue, and it is simply a matter of how much of that business came from work performed in the Eastern District of New York.4 Without question, USSF has targeted the Eastern District of New York with existing or potential customers, including by soliciting McKeon, which resides in this district, to work with it, and promoting USSF’s products on a website accessible to users in this district. As discussed infra, these interactions with the Eastern District of New York warrant further discovery. E. McKeon Should be Permitted Limited Discovery Courts may - and often do - allow discovery to aid in determining jurisdictional and venue questions. See GTFM Inc. v. Int’l Basic Source, Inc., 01 Civ. 6203 (RWS), 2002 U.S. Dist. LEXIS 4 The Federal Circuit has, to date, not ruled on the question of whether the “acts of infringement” in section 1400(b) need be related to the defendant’s regular and established place of business. See Raytheon, 2017 U.S. Dist. LEXIS 100887, at *19. Case 1:17-cv-00172-LDH-PK Document 21 Filed 09/20/17 Page 24 of 31 PageID #: 179 19 LEGAL\32538324\1 14691.0001.000/399137.000 345, at *2 (S.D.N.Y. Jan. 11, 2002). Although courts have “considerable discretion” in terms of how such questions are handled, “a court should take care to give the plaintiff ample opportunity to secure and present evidence relevant to the existence of jurisdiction.” APWU v. Potter, 343 F.3d 619, 627 (2d Cir. 2003) (internal quotation omitted). Such discovery has typically been authorized where the plaintiff has made “a threshold showing that there is some basis for the assertion of jurisdiction[,] facts that would support a colorable claim of jurisdiction.” Daval Steel Prods. v. M.V. Juraj Dalmatinac, 718 F. Supp. 159, 162 (S.D.N.Y. 1989); see also Strategem Dev. Corp. v. Heron Int’l N.V., 153 F.R.D. 535, 547-48 (S.D.N.Y. 1994) (authorizing jurisdictional discovery where plaintiff “made a sufficient start” toward establishing jurisdiction, though not “a prima facie showing”); Hollins v. U.S. Tennis Ass’n, 469 F. Supp. 2d 67, 71-72 (E.D.N.Y. 2006) (noting Second Circuit distinction between allegations that are “insufficiently developed”, which warrant discovery, and “those that are ‘sparse’ and ‘conclusory’ requiring dismissal”) (internal citation omitted). Discovery should be permitted where the facts necessary to establish jurisdiction or venue “lie exclusively within the defendant’s knowledge.” Winston & Strawn v. Dong Won Secs. Co., 02 Civ. 0183 (RWS), 2002 U.S. Dist. LEXIS 20952, at *16 (S.D.N.Y. Nov. 4, 2002); GTFM Inc., 2002 U.S. Dist. LEXIS 345, at *5 (authorizing 30-day period of document requests and a deposition where “there is an issue of whether . . . [defendant] is doing and/or transacting business in the State of New York and this judicial district”). As often noted, “[d]iscovery will lead to a more accurate judgment than one made solely on the basis of affidavits in response to the motion.” Winston & Strawn, 2002 U.S. Dist. LEXIS 20952, at *16. Since the issuance of TC Heartland, numerous district courts have recognized that limited discovery on issues relating to venue is appropriate. See, e.g., Bristol-Myers Squibb Co., 2017 U.S. Dist. LEXIS 146372, at *3; RegenLab USA LLC, 2017 U.S. Dist. LEXIS 131627, at *9; Nike Case 1:17-cv-00172-LDH-PK Document 21 Filed 09/20/17 Page 25 of 31 PageID #: 180 20 LEGAL\32538324\1 14691.0001.000/399137.000 v. Skechers, 2017 WL 3389022. In Bristol-Myers Squibb, 2017 U.S. Dist. LEXIS 146372, at *48, as here, the defendant argued that several aspects of its business were not present in the district, “including that MPI does not own or lease any manufacturing plants, corporate offices, facilities or other real property in Delaware; MPI does not have telephone listings or mailing addresses in Delaware; and MPI does not have any employees working in Delaware.” Nonetheless, Judge Stark concluded that these facts “are not dispositive of whether MPI has a regular and established place of business here,” especially given that the defendant “does business here, is registered to do business here, and ships goods that regularly end up in this District.” Id. at *48-49. With respect to jurisdiction and venue, plaintiff’s allegations in the Complaint have now been supported and amplified by the Sadeghian and Lambridis Declarations, which make clear that, among other things, USSF continues to promote the infringing product on the USSF Website to users throughout New York and in the Eastern District of New York, that the website represents that USSF has offices in New York, that a contract to supply the accused products in Buffalo was not cancelled until four months after the patent issued and suit was filed, that USSF has fulfilled numerous projects in New York City (including World Financial Center, Beekman Hotel and Residences, Brookfield Place, and H&M 5th Avenue Flagship store), which, although not for the accused products, are displayed prominently on the USSF Website, as are representations touting USSF as a “LEADING PROVIDER OF FIRE CURTAINS AROUND NEW YORK,” “TOP PROVIDER OF SMOKE CURTAINS IN NEW YORK,” and “LEADING PROVIDER OF FIRE CURTAINS IN NEW YORK CITY.” Based on the evidence of record, there are open questions concerning whether the Buffalo contract was negotiated or executed in New York (relevant to potential jurisdiction under CPLR § 302(a)(1)) and what New York office USSF is referring to on its website, how much revenue has been obtained in the Eastern District of New York, whether USSF has relationships with Case 1:17-cv-00172-LDH-PK Document 21 Filed 09/20/17 Page 26 of 31 PageID #: 181 21 LEGAL\32538324\1 14691.0001.000/399137.000 distributors or others in the Eastern District who offer the accused products for sale, whether USSF’s presentations to the building community have taken place in the Eastern District of New York, and how often USSF’s employees do business in New York (relevant to venue). At the pre-motion conference in this matter, the Court expressed concern about preventing a fishing expedition, posing the question of whether information to support venue would not be publicly available to plaintiff. Yet, there are clearly factual issues that are exclusively within USSF’s control. Whether the defendant has a brick-and-mortar establishment in the district would certainly be publicly available, but other relevant factors, including USSF’s representations to consumers in the district, benefits received by USSF in the district, and targeted interactions with the district, are not necessarily publicly available and would be within the control of USSF. Also within the control of USSF is what is intended by the reference on the USSF Website to New York and whether that reference includes the Eastern District of New York. McKeon should also be allowed to pursue limited discovery because of the credibility issues in this case. Dr. Sadeghian has done business under the names of numerous companies over the years; ascertaining the particular corporations and limited liability companies involved in defendants’ fire curtain business has been a challenge. The Sadeghian Declaration raises questions. Sadeghian states that none of USSF’s thirteen employees “live or regularly work in the State of New York [Dkt No. 20] (Sadeghian Dec. ¶ 13), begging the question of how often these employees do work in the State of New York. Sadeghian claims that the USSF Website is “passive” (id. at ¶ 17), but a user can request information from the company and identify its project needs so that is not entirely accurate. Sadeghian admits that the accused product was offered for sale in New York and claims that the product “was never sold or delivered to this customer” (id. ¶ 27), but the contract for this product was entered into years ago, and was not terminated until four months after the patent was issued and suit was filed. See Lambridis Dec. ¶ 18, Ex. N. Sadeghian Case 1:17-cv-00172-LDH-PK Document 21 Filed 09/20/17 Page 27 of 31 PageID #: 182 22 LEGAL\32538324\1 14691.0001.000/399137.000 states that 3.55% of defendants’ business “came from customers or distributors located in the State of New York,” but without information as to who those distributors are, it is unknown whether some might be located in the Eastern District of New York and whether these distributors might have offered the accused product to customers on behalf of USSF. Sadeghian Dec. ¶ 19. In short, McKeon has made “a sufficient start” in establishing jurisdiction and venue and should be permitted limited discovery to complete the task. F. Alternatively, The Action Should be Transferred to the Eastern District of Virginia Under 28 U.S.C. § 1406(a), a “district court of a district in which is filed a case laying venue in the wrong division or district shall dismiss, or it be in the interest of justice, transfer such case to any district or division in which it could have been brought.” Gonsalves-Carvalhal, 2014 WL 201502, *3 (E.D.N.Y. Jan. 16, 2014). Courts “enjoy considerable discretion in deciding whether to transfer a case [under § 1406] in the interest of justice.” Id. (internal citation omitted). The Supreme Court has held that a district court may transfer, rather than dismiss, an action in which it has no personal jurisdiction over the defendants. Goldlawr v. Heiman, 369 U.S. 463, 465- 66 (1962). “[A]lthough unusual,” there is “no bar” to plaintiff seeking a change of venue “where there has been a change in circumstances since the time that plaintiff brought the action in his chosen forum.” Azrelyant v. The B. Manishewitz Co., No. 98-CV-2502 ILG, 2000 WL 264345, *4 (E.D.N.Y. Jan. 13, 2000); see also Int’l Flavors & Fragrances Inc. v. Van Eaghen Int’l B.V., No. 06-CV-490, 2006 WL 1876671, at *8 (S.D.N.Y. July 6, 2006) (“Dismissal is harsh remedy that is best avoided when another avenue is open”). Here, McKeon filed the Complaint in September 2016. At the behest of USSF, who sought to engage McKeon in settlement negotiations, McKeon delayed serving the Complaint until April 17, 2017, by which time it became clear that USSF had no intention of executing the settlement Case 1:17-cv-00172-LDH-PK Document 21 Filed 09/20/17 Page 28 of 31 PageID #: 183 23 LEGAL\32538324\1 14691.0001.000/399137.000 agreement that the parties had been negotiating. See Lambridis Dec. ¶ 6. A dismissal at this time would only further delay the proceeding, which has already been delayed as a result of these actions. Aware of this, USSF has not sought to transfer the action to a location where it might have been brought, but has sought merely a dismissal. In the event that the Court determines that venue is improper, transfer is in the best interest of the litigation because it will present a waste of “time, energy and money,” and will “protect litigants, witnesses and the public against unnecessary inconvenience and expense.” Azrelyant, 2000 WL 264345, at *4 (internal citation omitted). Circumstances have changed in that TC Heartland significantly changed the law of venue applicable to the action. USSF is incorporated in the Eastern District of Virginia and maintains its corporate headquarters there; the Eastern District of Virginia is thus a jurisdiction and venue in which this action could have been brought. See e.g., Int’l Flavors & Fragrances Inc., 2006 WL 1876671, at *8 (ordering transfer pursuant to § 1406(a)); White, 2013 WL 527804, at *5 (same); (ordering transfer of one defendant pursuant to § 1406(a) and another defendant pursuant to § 1404(a)). III. CONCLUSION For the reasons stated herein, the motion of USSF to dismiss for improper venue and lack of personal jurisdiction should be denied, with limited discovery allowed in the event that the Court concludes that McKeon has not made out a prima facie case of jurisdiction and/or venue. Case 1:17-cv-00172-LDH-PK Document 21 Filed 09/20/17 Page 29 of 31 PageID #: 184 24 LEGAL\32538324\1 14691.0001.000/399137.000 Dated: September 20, 2017 COZEN O’CONNOR P.C. /s/ Lisa A. Ferrari Lisa A. Ferrari (LF8081) 277 Park Avenue New York, New York 10172 Tel. (212) 883-4900 Fax: (212) 986-0604 Email: lferrari@cozen.com Attorneys for Plaintiff McKeon Rolling Steel Door Co., Inc. Case 1:17-cv-00172-LDH-PK Document 21 Filed 09/20/17 Page 30 of 31 PageID #: 185 25 LEGAL\32538324\1 14691.0001.000/399137.000 CERTIFICATE OF SERVICE I hereby certify that, on September 20, 2017, the foregoing MEMORANDUM OF LAW CONCERNING COURT’S BRIEFING REQUEST AT PRE-MOTION CONFERENCE AND IN OPPOSITION TO DEFENDANTS’ MOTION TO DISMISS FOR IMPROPER VENUE, OR IN THE ALTERNATIVE, FOR LACK OF PERSONAL JURISDICTION has been filed electronically and is available for viewing and downloading from the ECF System, and is being served upon all counsel of record via ECF transmission in accordance with the Electronic Filing System of the Court. /s/ Lisa A. Ferrari Lisa A. Ferrari Case 1:17-cv-00172-LDH-PK Document 21 Filed 09/20/17 Page 31 of 31 PageID #: 186