Tristar Products, Inc. v. Novel Brands Llc

MOTION to Dismiss for Lack of Jurisdiction WITH SUPPORTING MEMO

D.R.I.March 27, 2017

1 Christine K. Bush cbush@hinckleyallen.com Ryan M. Gainor rgainor@hinckleyallen.com HINCKLEY, ALLEN & SNYDER LLP 100 Westminster Street Suite 1500 Providence, RI 02903 Telephone: (401) 274-2000 Facsimile: (401) 277-9600 Brian D. O’Reilly boreilly@ipcounselors.com Jennette Wiser jwiser@ipcounselors.com EPSTEIN DRANGEL LLP 60 East 42nd Street, Suite 2520 New York, NY 10165 Telephone: (212) 292-5390 Facsimile: (212) 292-5391 (applications for admission pro hac vice forthcoming) Attorneys for Defendant Novel Brands LLC UNITED STATES DISTRICT COURT DISTRICT OF RHODE ISLAND (PROVIDENCE) TRISTAR PRODUCTS, INC., Plaintiff v. NOVEL BRANDS LLC, Defendant CIVIL ACTION No. 1:17-cv-00043-M-PAS DEFENDANT’S MOTION TO DISMISS FOR LACK OF PERSONAL JURISDICTION AND IMPROPER VENUE OR ALTERNATIVELY, TRANSFER VENUE Pursuant to Federal Rules of Civil Procedure 12(b)(2) and (b)(3), Defendant Novel Brands LLC (hereinafter, “Novel Brands” or “Defendant”) through its undersigned counsel, Case 1:17-cv-00043-M-PAS Document 12 Filed 03/27/17 Page 1 of 3 PageID #: 33 2 hereby respectfully moves to dismiss the above-captioned action on the grounds that the Court lacks personal jurisdiction over Defendant and venue is improper or, in the alternative, Defendant requests that the Court transfer this action to the United States District Court for the District of New Jersey (hereinafter, “Motion”). This Motion is made and based upon the Memorandum of Law in support hereof; the Declaration of Devon Israni; the Declaration of Brian D. O’Reilly; the pleadings and papers on file herein; and such other or further matters as the Court deems appropriate in connection with this Motion. Dated: March 27, 2017 Respectfully submitted, HINCKLEY, ALLEN & SNYDER LLP By: /s/ Christine K. Bush Christine K. Bush (#5587) cbush@hinckleyallen.com Ryan M. Gainor (#9353) rgainor@hinckleyallen.com HINCKLEY, ALLEN & SNYDER LLP 100 Westminster Street Suite 1500 Providence, RI 02903 Telephone: (401) 274-2000 Facsimile: (401) 277-9600 Brian D. O’Reilly boreilly@ipcounselors.com Jennette Wiser jwiser@ipcounselors.com EPSTEIN DRANGEL LLP 60 East 42nd Street, Suite 2520 New York, NY 10165 Telephone: (212) 292-5390 Facsimile: (212) 292-5391 (applications for admission pro hac vice forthcoming) Attorneys for Defendant Novel Brands LLC Case 1:17-cv-00043-M-PAS Document 12 Filed 03/27/17 Page 2 of 3 PageID #: 34 1 CERTIFICATE OF SERVICE I hereby certify that on March 27, 2016, I caused the foregoing to be electronically filed with the Clerk of the Court using CM/ECF, which will send electronic notification of such filing to Plaintiff’s attorneys as indicated below: Brenna Anatone Force bforce@apslaw.com Jeffrey K. Techentin jtechentin@apslaw.com Adler Pollock & Sheehan P.C. One Citizens Plaza 8th Floor Providence, RI 02903 Telephone: (401) 274-7200 Facsimile: (401) 351-6147 Providence, Rhode Island By: /s/ Christine K. Bush Christine K. Bush cbush@hinckleyallen.com Ryan M. Gainor rgainor@hinckleyallen.com HINCKLEY, ALLEN & SNYDER LLP 100 Westminster Street Suite 1500 Providence, RI 02903 Telephone: (401) 274-2000 Facsimile: (401) 277-9600 Case 1:17-cv-00043-M-PAS Document 12 Filed 03/27/17 Page 3 of 3 PageID #: 35 Christine K. Bush cbush@hinckleyallen.com Ryan M. Gainor rgainor@hinckleyallen.com HINCKLEY, ALLEN & SNYDER LLP 100 Westminster Street Suite 1500 Providence, RI 02903 Telephone: (401) 274-2000 Facsimile: (401) 277-9600 Brian D. O’Reilly boreilly@ipcounselors.com Jennette Wiser jwiser@ipcounselors.com EPSTEIN DRANGEL LLP 60 East 42nd Street, Suite 2520 New York, NY 10165 Telephone: (212) 292-5390 Facsimile: (212) 292-5391 (applications for admission pro hac vice forthcoming) Attorneys for Defendant Novel Brands LLC UNITED STATES DISTRICT COURT DISTRICT OF RHODE ISLAND (PROVIDENCE) TRISTAR PRODUCTS, INC., Plaintiff v. NOVEL BRANDS LLC, Defendant CIVIL ACTION No. 1:17-cv-00043-M-PAS DEFENDANT’S MEMORANDUM OF LAW IN SUPPORT OF ITS MOTION TO DISMISS FOR LACK OF PERSONAL JURISDICTION AND IMPROPER VENUE OR ALTERNATIVELY, TRANSFER VENUE Case 1:17-cv-00043-M-PAS Document 12-1 Filed 03/27/17 Page 1 of 21 PageID #: 36 i TABLE OF CONTENTS I. PRELIMINARY STATEMENT ............................................................................................. 1 II. BACKGROUND ..................................................................................................................... 2 III. ARGUMENT .......................................................................................................................... 3 A. This Action Should Be Dismissed For Lack of Personal Jurisdiction. ............................... 3 1. Plaintiff has Failed to Allege Sufficient Facts to Establish Specific Jurisdiction Over Novel Brands. .................................................................................................................. 4 2. Plaintiff has Failed to Allege Sufficient Facts To Establish General Jurisdiction Over Novel Brands. .................................................................................................................. 8 B. This Action Should Be Dismissed For Improper Venue. ................................................... 8 C. Alternatively, This Action Should Be Transferred to the District of New .......................... Jersey................................................................................................................................. 10 1. This Action Could Have Been Brought in the District of New Jersey. ......................... 11 2. Plaintiff’s Choice of Forum Should Be Given Little Deference. .................................. 11 3. The Balance of Private and Public Interests Weighs in Favor of No Transfer. ........... 11 a. The District of New Jersey is More Convenient for the Parties ............................... 12 b. The District of New Jersey is More Convenient for Potential Witnesses ................. 12 c. The Ease of Access to Evidence and Documents Favors Transfer. .......................... 13 d. The Availability of Compulsory Process to Compel Attendance of Witnesses Favors Transfer. .................................................................................................................... 13 e. The Cost of Attendance of Willing Witnesses Favors Transfer. .............................. 13 f. The Remaining Interest Factors Are Neutral. ........................................................... 14 4. It is in the Interests of Justice to Transfer the Action to the District of New Jersey. .... 14 IV. CONCLUSION ..................................................................................................................... 15 Case 1:17-cv-00043-M-PAS Document 12-1 Filed 03/27/17 Page 2 of 21 PageID #: 37 ii TABLE OF AUTHORITIES Cases A Corp. v. All Am. Plumbing, 812 F.3d 54 (1st Cir. 2016) ............................................................. 3 Adams v. Adams, 601 F.3d 1 (1st Cir. 2010) .................................................................................. 6 Adelson v. Hananel, 652 F.3d 75 (1st Cir. 2011) ....................................................................... 5, 7 Boothroyd Dewhurst, Inc. v. Bd. of Trs. of the Leland Stanford Junior Univ., C.A. No. 92-0075 P, 1993 U.S. Dist. LEXIS 20855 (D.R.I. July 8, 1993) ............................................................ 10 Brian Jackson & Co. v. Eximias Pharm. Corp., 248 F. Supp. 2d 31 (D.R.I. 2003) ..................... 10 C.W. Downer & Co. v. Bioriginal Food & Sci. Corp., 771 F.3d 59 (1st Cir. 2014) ...................... 3 Copia Commc’ns, LLC v. AMResorts, L.P., No. CV 14-13056-LTS, 2015 WL 7621480 (D. Mass. Feb. 5, 2015), aff’d, 812 F.3d 1 (1st Cir. 2016) ....................................................... 4, 5, 6 Cossart v. United Excel Corp., 804 F.3d 13 (1st Cir. 2015) ....................................................... 3, 5 Carreras v. PMG Collins, LLC, 660 F.3d 549 (1st Cir. 2011) ....................................................... 6 Daynard v. Ness, Motley, Loadholt, Richardson & Poole, P.A., 290 F.3d 42 (1st Cir. 2002) ....... 3 Donatelli v. Nat'l Hockey League, 893 F.2d 459 (1st Cir. 1990) ................................................... 4 Edvisors Network, Inc. v. Educ. Advisors, Inc., 755 F.Supp.2d 272 (D. Mass. 2010) ................... 5 Emissive Energy Corp. v Armament Sys. & Procedures, Inc., No. CA 03-528L, 2004 US Dist LEXIS 18437 (D.R.I. Aug. 2, 2004) ................................................................................... 10, 11 Fourco Glass Co. v. Transmirra Products Corp., 353 U.S. 222 (1957) .......................................... 9 Glater v. Eli Lilly & Co., 744 F.2d 213 (1st Cir. 1984) .................................................................. 8 Goodyear Dunlop Tires Operations, S.A. v. Brown, 131 S. Ct. 2846 (2011) ................................. 8 Gulf Oil Corp. v. Gilbert, 330 U.S. 501 (1947) ............................................................................ 10 Hannon v. Beard, 524 F.3d 275 (1st Cir. 2008) ............................................................................. 4 Harlow v Children's Hosp., 432 F3d 50 (1st Cir 2005) .......................................................... 3, 4, 5 Int'l Shoe Co. v. Washington, 326 U.S. 310 (1945) .................................................................... 4, 8 Keeton v. Hustler Magazine, Inc., 465 U.S. 770, 104 S.Ct. 1473, 79 L.Ed.2d 790 (1984) ............ 6 Macamaux v. Millard, No. 07-485ML, 2009 US Dist LEXIS 6495 (D.R.I. Jan. 28, 2009) .......... 4 Case 1:17-cv-00043-M-PAS Document 12-1 Filed 03/27/17 Page 3 of 21 PageID #: 38 iii Main St. NA Parkade, LLC v Sleepy's, LLC, 2014 US Dist LEXIS 20470 (D.R.I. Feb. 19, 2014) ................................................................................................................................................... 10 Mass. Sch. of Law at Andover, Inc. v. Am. Bar Ass’n, 142 F.3d 26 (1st Cir.1998) ........................ 4 McEvily v. Sunbeam-Oster Co., Inc., 878 F. Supp. 337 (D.R.I. 1994) ......................................... 11 Milliken v. Meyer, 311 U.S. 457 (1940) ......................................................................................... 4 Nash v. CVS Caremark Corp., No. 09-079S, 2009 US Dist LEXIS 63678 (D.R.I. July 1, 2009) 11 Noonan v. Winston Co., 135 F.3d 85 (1st Cir. 1998) ................................................................. 3, 8 Piper Aircraft Co. v. Reyno, 454 U.S. 235 (1981) ........................................................................ 11 Sawtelle v. Farrell, 70 F.3d 1381 (1st Cir. 1995) ....................................................................... 5, 6 Stewart Org., Inc. v. Ricoh Corp., 487 U.S. 22 (1988) ................................................................. 10 TC Heartland LLC v. Kraft Food Brands Group LLC, Case No. 16-341 ...................................... 9 Ticketmaster-New York, Inc. v. Alioto, 26 F.3d 201 (1st. Cir. 1994).......................................... 3, 7 Tristar Products, Inc. v. E. Mishan & Sons Inc., Dkt. 1, Case No. 1:17-cv-01204-RMB-JS (Feb. 21 2017) ...................................................................................................................................... 3 Tristar Products, Inc. v. Ocean State Jobbers, Inc. et al, Dkt. 1, Case No. 2:17-cv-01767-KSH- CLW (Mar. 16, 2017) ................................................................................................................. 2 Tristar Products, Inc. v. Tekno Products Inc., Dkt. 1, Case No. 1:16-cv-00681-S-LDA (Dec. 30, 2017) ........................................................................................................................................... 3 Tristar Products, Inc. v. Telebrands Corp. et al, Dkt. 1, Case No. 1:17-cv-01206-RMB-JS (Feb. 21, 2017) ..................................................................................................................................... 3 Tristar Products, Inc. v. TV Direct LLC, Dkt. 1, Case No. 1:17-cv-00060-M-LDA (Feb. 15, 2017) ........................................................................................................................................... 3 Walden v. Fiore, 134 S.Ct. 1115 (2014) ......................................................................................... 4 Statutes 28 U.S.C. § 1391(b) .................................................................................................................... 1, 9 28 U.S.C. § 1391(c) .................................................................................................................... 1, 9 28 U.S.C. § 1400(b) .................................................................................................................... 1, 9 28 U.S.C. § 1404(a) .................................................................................................................. 1, 10 Case 1:17-cv-00043-M-PAS Document 12-1 Filed 03/27/17 Page 4 of 21 PageID #: 39 iv Fed. R. Civ. P. 12(b)(2)............................................................................................................... 1, 3 Fed. R. Civ. P. 12(b)(3)............................................................................................................... 1, 9 R.I. Gen. Laws § 9-5-33.................................................................................................................. 4 Case 1:17-cv-00043-M-PAS Document 12-1 Filed 03/27/17 Page 5 of 21 PageID #: 40 1 Defendant Novel Brands LLC (hereinafter, “Novel Brands” or “Defendant”) through its undersigned counsel, hereby respectfully submits this Memorandum of Law in Support of its Motion to Dismiss for Lack of Personal Jurisdiction and Improper Venue or Alternatively, Transfer Venue to the United States District Court for the District of New Jersey (hereinafter, “Motion”) against Plaintiff Tristar Products, Inc. (hereinafter, “Plaintiff” or “Tristar”). I. PRELIMINARY STATEMENT This action should be dismissed for lack of personal jurisdiction under Rule 12(b)(2) of the Federal Rules of Civil Procedure. Plaintiff alleges that Novel Brands has committed infringement in this district and that Novel Brands has regularly engaged in business in this State and district. Complaint, ¶ 9. However, Novel Brands has never sold the Accused Product (as defined infra) in the State of Rhode Island or this district and does not regularly conduct business in Rhode Island. This action should also be dismissed for improper venue under Rule 12(b)(3) of the Federal Rules of Civil Procedure. Plaintiff alleges venue pursuant to 28 U.S.C. § 1391(b)-(c) and § 1400(b). Complaint, ¶ 9. Defendant neither resides nor has a principal place of business in the State of Rhode Island. Additionally, Novel Brands has never sold the Accused Product in Rhode Island or in this judicial district. Accordingly, venue is improper. Alternatively, this action should be transferred to the United States District Court for the District of New Jersey under 28 U.S.C. 1404(a), as New Jersey is a more convenient forum for the parties and potential witnesses and it is in the interest of justice to transfer. Both parties are residents and have principal places of business in New Jersey. All of Defendant’s witnesses are located in New Jersey. Similarly, all of Plaintiff’s witnesses are likely located in New Jersey or outside of the United States. The majority of the parties’ evidence and documents are located in Case 1:17-cv-00043-M-PAS Document 12-1 Filed 03/27/17 Page 6 of 21 PageID #: 41 2 New Jersey. Furthermore, the potential need to subpoena third party witnesses and the cost of attendance of willing witnesses balances in favor of transfer to the District of New Jersey. II. BACKGROUND Both parties are residents of New Jersey. Plaintiff is a Pennsylvania corporation with a principal place of business at 492 Route 46 East, Fairfield, New Jersey 07004. Complaint, ¶ 1. Defendant is a New Jersey limited liability company with a principal place of business at 333B Route 46 West, Suite 140, Fairfield, New Jersey 07004. Complaint, ¶ 3; Declaration by Devon Israni (“Israni Dec.”), ¶ 2. All witnesses and documents for this case are also located in New Jersey or outside of the United States. Israni Dec., ¶ 8. Defendant made no allegedly infringing sales of the Accused Product in Rhode Island. Plaintiff alleges that Novel Brands’ “Copper Pro Square Pan” (“Accused Product”) infringes Plaintiff’s United States Design Patent No. D772,641 (the “‘641 Patent”). Complaint, ¶ 4-6, 12- 16. Defendant has sold only four thousand three hundred ninety-six (4,396) units of this product since the ‘641 Patent issued and it sold none of those units in Rhode Island or in this judicial district. Israni Dec., ¶¶ 5-6. Tristar has also filed five other patent cases against defendants located in New Jersey for the infringement of the ‘641 Patent: three in the District of New Jersey and two in the District of Rhode Island. Declaration of Brian D. O’Reilly (“O’Reilly Dec.”), ¶¶ 3-5. Two of the New Jersey actions have advanced beyond the pleadings to include briefing on Tristar’s motions for a temporary restraining order, while Plaintiff has not served defendant in one of the Rhode Island cases and the defendant has not answered in the other. O’Reilly Dec., ¶¶ 6-7. The actions filed in the District of New Jersey, include: Tristar Products, Inc. v. Ocean State Jobbers, Inc. et al, Dkt. 1, Case No. 2:17-cv-01767-KSH-CLW (Mar. 16, 2017) (“Ocean Case 1:17-cv-00043-M-PAS Document 12-1 Filed 03/27/17 Page 7 of 21 PageID #: 42 3 State”); Tristar Products, Inc. v. E. Mishan & Sons Inc., Dkt. 1, Case No. 1:17-cv-01204-RMB- JS (Feb. 21 2017) (“E. Mishan”); and Tristar Products, Inc. v. Telebrands Corp. et al, Dkt. 1, Case No. 1:17-cv-01206-RMB-JS (Feb. 21, 2017) (“Telebrands”) (collectively, the “New Jersey Actions”). O’Reilly Dec., ¶¶ 4. The two actions filed in the District of Rhode Island include: Tristar Products, Inc. v. TV Direct LLC, Dkt. 1, Case No. 1:17-cv-00060-M-LDA (Feb. 15, 2017) (“TV Direct”); Tristar Products, Inc. v. Tekno Products Inc., Dkt. 1, Case No. 1:16-cv- 00681-S-LDA (Dec. 30, 2017) (“Tekno Products”); and the current case (collectively, the “Rhode Island Actions”). O’Reilly Dec., ¶ 5. III. ARGUMENT A. This Action Should Be Dismissed For Lack of Personal Jurisdiction. This action should be dismissed under Fed. R. Civ. P. 12(b)(2), because this Court lacks personal jurisdiction over Novel Brands. The plaintiff bears the burden of establishing personal jurisdiction. See Cossart v. United Excel Corp., 804 F.3d 13, 18 (1st Cir. 2015); Daynard v. Ness, Motley, Loadholt, Richardson & Poole, P.A., 290 F.3d 42, 50 (1st Cir. 2002). “An exercise of jurisdiction must be authorized by state statute and must comply with the Constitution.” Harlow v Children's Hosp., 432 F3d 50, 57 (1st Cir 2005); see Noonan v. Winston Co., 135 F.3d 85, 89 (1st Cir. 1998). In performing the personal jurisdiction analysis, Courts consider “uncontradicted facts proffered by the defendant.” C.W. Downer & Co. v. Bioriginal Food & Sci. Corp., 771 F.3d 59, 65 (1st Cir. 2014). The plaintiff “must put forward evidence of specific facts to demonstrate that jurisdiction exists.” A Corp. v. All Am. Plumbing, 812 F.3d 54, 58 (1st Cir. 2016) (internal quotation marks and citation omitted). The court is not limited to the allegations of the complaint. See Ticketmaster-New York, Inc. v. Alioto, 26 F.3d 201 (1st. Cir. 1994); Copia Commc’ns, LLC v. AMResorts, L.P., No. Case 1:17-cv-00043-M-PAS Document 12-1 Filed 03/27/17 Page 8 of 21 PageID #: 43 4 CV 14-13056-LTS, 2015 WL 7621480, at *1 (D. Mass. Feb. 5, 2015), aff’d, 812 F.3d 1 (1st Cir. 2016) (“Because this motion concerns whether the Court has personal jurisdiction over the defendants, the Court may consider facts beyond those alleged in the complaint.”). Rhode Island’s long arm statute, R.I. Gen. Laws § 9-5-33, allows for the exercise of personal jurisdiction to the outermost extent permitted under due process. Macamaux v. Millard, No. 07-485ML, 2009 US Dist LEXIS 6495, at *6 (D.R.I. Jan. 28, 2009); see Donatelli v. Nat'l Hockey League, 893 F.2d 459, 461 (1st Cir. 1990). Due process “requires only that in order to subject a defendant to a judgment in personam, if he be not present within the territory of the forum, he have certain minimum contacts with it such that the maintenance of the suit does not offend ‘traditional notions of fair play and substantial justice.’” Int'l Shoe Co. v. Washington, 326 U.S. 310 (1945) (quoting Milliken v. Meyer, 311 U.S. 457, 463 (1940)). There are two types of personal jurisdiction: general jurisdiction and specific jurisdiction. Harlow, 432 F.3d at 57. “For specific jurisdiction, the plaintiff's claim must be related to the defendant's contacts” and “[f]or general jurisdiction,… the defendant must have continuous and systematic contacts with the state.” Id. As outlined below, Plaintiff has failed to allege sufficient facts to establish general or specific jurisdiction over Defendant and therefore, the complaint should be dismissed. 1. Plaintiff has Failed to Allege Sufficient Facts to Establish Specific Jurisdiction Over Novel Brands. To sufficiently establish specific jurisdiction, plaintiff must produce evidence that shows that the cause of action either arises directly out of, or is related to, the defendant’s contacts with the forum. Walden v. Fiore, 134 S.Ct. 1115, 1121 (2014); Hannon v. Beard, 524 F.3d 275, 279 (1st Cir. 2008) (citing Mass. Sch. of Law at Andover, Inc. v. Am. Bar Ass’n, 142 F.3d 26, 34 (1st Cir.1998)) ( “Specific jurisdiction exists when there is a demonstrable nexus between a plaintiff's Case 1:17-cv-00043-M-PAS Document 12-1 Filed 03/27/17 Page 9 of 21 PageID #: 44 5 claims and a defendant's forum-based activities.”); Harlow, 432 F3d at 60-61. The First Circuit has rejected “the exercise of personal jurisdiction whenever the connection between the cause of action and the defendant’s forum-state contacts seems attenuated and indirect” and “[i]nstead, the defendant’s in-state conduct must form an important, or at least material, element of proof in the plaintiff’s case.” Harlow, 432 F3d. at 61 (internal citations omitted). Specifically, according to First Circuit precedent, a plaintiff seeking to establish specific jurisdiction must show that each of three conditions is satisfied: First, the claim underlying the litigation must directly arise out of, or relate to, the defendant’s forum-state activities. Second, the defendant’s in-state contacts must represent a purposeful availment of the privilege of conducting activities in the forum state, thereby invoking the benefits and protections of that state’s laws and making the defendant's involuntary presence before the state's courts foreseeable. Third, the exercise of jurisdiction must ... be reasonable.1 Here, all three prongs weigh in favor of Defendant’s Motion. The relatedness prong endeavors to focus “the court’s attention on the nexus between a plaintiff's claim and the defendant's contacts with the forum.” Sawtelle v. Farrell, 70 F.3d 1381, 1389 (1st Cir. 1995). Put another way, the plaintiff’s claims must arise out of, or relate to, the defendant’s forum state activities. Cossart, 804 F.3d at 20; Adelson v. Hananel, 652 F.3d 75, 81 (1st Cir. 2011) (The relatedness prong requires a plaintiff to show “a demonstrable nexus between [its] claims and [the defendant’s] forum-based activities, such . . . [that] the litigation itself is founded directly on those activities.”). This requirement “ensures that the defendant will not be subject to personal jurisdiction unless its contacts with the forum state caused the alleged harm.” Edvisors Network, Inc. v. Educ. Advisors, Inc., 755 F.Supp.2d 272, 280 (D. Mass. 2010). Plaintiff has not alleged any specific facts that Defendant infringed its ‘641 Patent in Rhode 1 Copia, 812 F.3d at 4 (internal citation omitted). Case 1:17-cv-00043-M-PAS Document 12-1 Filed 03/27/17 Page 10 of 21 PageID #: 45 6 Island. In fact, Novel Brands has never directly sold the Accused Product in Rhode Island. Accordingly, the claim in this action did not arise out of a specific contact with the State of Rhode Island. On the second prong, purposeful availment, “[t]he function of the purposeful availment requirement is to assure that personal jurisdiction is not premised solely upon a defendant’s ‘random, isolated, or fortuitous’ contacts with the forum state.” Sawtelle, 70 F.3d at 1391 (quoting Keeton v. Hustler Magazine, Inc., 465 U.S. 770, 774, 104 S.Ct. 1473, 79 L.Ed.2d 790 (1984)). “In determining whether the purposeful availment condition is satisfied, our ‘key focal points’ are the voluntariness of the defendants’ relevant [forum] contacts and the foreseeability of the defendants falling subject to [the forum’s] jurisdiction.” Copia II, 812 F.3d at 5. Voluntariness exists when a defendant reaches out to the plaintiff’s state of residence to create a relationship. Phillips Exeter Acad., 196 F.3d at 292; Carreras v. PMG Collins, LLC, 660 F.3d 549, 555 (1st Cir. 2011) (The “purposeful availment” prong “represents a rough quid pro quo: when a defendant deliberately targets its behavior toward the society or economy of a particular forum, the forum should have the power to subject the defendant to judgment regarding that behavior.”). Even where a Court finds voluntariness, “the purposeful availment prong of the jurisdictional test investigates whether the defendant benefitted from those contacts in a way that made jurisdiction foreseeable.” Id. “The focus of the purposeful availment inquiry is the defendant’s intentionality.” Adams v. Adams, 601 F.3d 1, 6 (1st Cir. 2010). Here, other than a cursory allegation that “[u]pon information and belief, Novel Brands has regularly engaged in business in this State and District and purposefully availed itself of the privilege of conducting business in this District, for example, by offering for sale and selling the Accused Product in this District,” plaintiff offers no facts to support a finding that Novel Brands Case 1:17-cv-00043-M-PAS Document 12-1 Filed 03/27/17 Page 11 of 21 PageID #: 46 7 purposefully availed itself of the privilege of doing business in Rhode Island or benefitted from contacts with this forum. Complaint, ¶ 9. The final prong also favors dismissal. The reasonableness analysis requires consideration of five gestalt factors: (1) the defendant’s burden of appearing [in the forum state], (2) the forum state’s interest in adjudicating the dispute, (3) the plaintiffs’ interest in obtaining convenient and effective relief, (4) the judicial system’s interest in obtaining the most effective resolution of the controversy, and (5) the common interests of all sovereigns in promoting substantive social policies. Ticketmaster-New York, 26 F.3d at 209. These factors typically “play a larger role in cases,” unlike this one, “where the minimum contacts question is very close.” Adelson, 510 F.3d at 51; Ticketmaster-New York, 26 F.3d at 210 (“[T]he weaker the plaintiff’s showing on the first two prongs . . . the less a defendant need show in terms of unreasonableness to defeat jurisdiction.”). With respect to the first factor, Novel Brands is a limited liability company organized under the laws of New Jersey, with a principal place of business there. Complaint, ¶ 3; Israni Dec. ¶ 2. If this case is not dismissed, Novel Brands will experience the burden associated with litigating outside its home forum. Accordingly, the first factor weighs in favor of dismissal. The second gestalt factor also weighs in favor of dismissal. Rhode Island’s interest in this litigation is “arguably lessened by the doubts surrounding whether defendant’s act can be said to have been committed in the forum.” Ticketmaster-New York, 26 F.3d at 211. Here, plaintiff cannot overcome those doubts. The third factor favors New Jersey as well. The Complaint identifies no witnesses located in this forum: plaintiff is a Pennsylvania entity, and Novel Brands is from New Jersey. Arguably, no key party/non-party witnesses reside in Rhode Island. Complaint, ¶ 1; see Ticketmaster-New York, 26 F.3d at 211 (taking into consideration the location of key witnesses). Case 1:17-cv-00043-M-PAS Document 12-1 Filed 03/27/17 Page 12 of 21 PageID #: 47 8 The fourth factor appears to be neutral, since the judicial system’s interest in the “administration of justice does not appear to cut in either direction.” Id. The final factor, however, also favors dismissal. Rhode Island has no articulable interest in this dispute. 2. Plaintiff has Failed to Allege Sufficient Facts To Establish General Jurisdiction Over Novel Brands. A court may assert general jurisdiction over foreign corporations only if their contacts with the state have been “so ‘continuous and systematic’ as to render them essentially at home in the forum State.” Goodyear Dunlop Tires Operations, S.A. v. Brown, 131 S. Ct. 2846, 2851 (2011) (quoting Int’l Shoe Co. v. Washington, 326 U.S. 310, 317 (1945)). “The standard for evaluating whether . . . contacts satisfy the constitutional general jurisdiction test ‘is considerably more stringent’ than that applied to specific jurisdiction questions.” Noonan, 135 F.3d at 93 (quoting Glater v. Eli Lilly & Co., 744 F.2d 213, 216 (1st Cir. 1984)). Defendant Novel Brands is a New Jersey limited liability company. Complaint, ¶ 3; Israni Dec., ¶. Plaintiff does not allege any specific facts to establish that Defendant has systematic and ongoing contact with the State of Rhode Island. The only fact that Plaintiff does allege is that Defendant has engaged in business in this State “by offering for sale and selling the Accused Product in this District.” Complaint, ¶ 9. However, as discussed in the previous section, Plaintiff has not alleged specific facts that prove that Novel Brands has actually sold any Accused Products in Rhode Island and in fact, Defendant has not directly sold any Accused Products in the State. Israni Dec., ¶. As such, Plaintiff has not proven that Defendant has engaged in continuous and systematic activity in the State of Rhode Island and therefore, this Court does not have general jurisdiction over Novel Brands. B. This Action Should Be Dismissed For Improper Venue. Pursuant to Fed. Rule of Civ. P. 12(b)(3), this action should be dismissed for improper Case 1:17-cv-00043-M-PAS Document 12-1 Filed 03/27/17 Page 13 of 21 PageID #: 48 9 venue. Under the relevant portion of 28 U.S.C. § 1391(b), “a civil action may be brought in (1) a judicial district in which any defendant resides, if all defendants are residents of the State in which the district is located; [or] (2) a judicial district in which a substantial part of the events or omissions giving rise to the claim occurred.” A corporation is deemed a resident “in any judicial district in which such defendant is subject to the court’s personal jurisdiction.” 28 U.S.C. § 1391(c). Since this Court does not have personal jurisdiction over Novel Brands, it is not a resident of the State under § 1391(c). Further, Plaintiff has failed to allege adequate facts to show that the claim in this action arose from an event or omission that occurred in Rhode Island or this juridical district. Accordingly, venue is improper under § 1391(b). Moreover, under 28 U.S.C. § 1400(b), “[a]ny civil action for patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business.” Currently before the United States Supreme Court is a patent venue case that will require the Supreme Court to decide whether 28 U.S.C. § 1400(b) is the sole and exclusive provision governing venue in patent infringement actions. See TC Heartland LLC v. Kraft Food Brands Group LLC, Case No. 16-341. Should the Supreme Court rule that the provision applies to all patent infringement cases, a corporate defendant’s residency shall only be established by place of incorporation and not by personal jurisdiction, contrary to § 1391(c) of the general venue statute. See also Fourco Glass Co. v. Transmirra Products Corp., 353 U.S. 222 (1957). Since Novel Brands is a New Jersey limited liability company and its principal place of business is in New Jersey, Defendant maintains that venue is improper based on residency under § 1400(b). See Israni Dec., ¶ 2. Further, again, Plaintiff has failed to allege specific facts to establish that the alleged infringement occurred in this judicial district or that Defendant has a regular and established Case 1:17-cv-00043-M-PAS Document 12-1 Filed 03/27/17 Page 14 of 21 PageID #: 49 10 place of business in Rhode Island. Thus, this action should be dismissed for improper venue. C. Alternatively, This Action Should Be Transferred to the District of New Jersey. If the Court does not dismiss the action for the preceding reasons, this action should be transferred to the District of New Jersey. Pursuant to 28 U.S.C. § 1404, a district court may exercise its discretion “to transfer venue to any other district or division where it might have been brought…for the convenience of parties and witnesses, in the interest of justice.” 28 U.S.C. § 1404(a). “Section 1404(a) is intended to place discretion in the district court to adjudicate motions for transfer according to an ‘individualized, case-by-case consideration of convenience and fairness.’” Main St. NA Parkade, LLC v Sleepy's, LLC, 2014 US Dist LEXIS 20470, at *2 (D.R.I. Feb. 19, 2014) (quoting Brian Jackson & Co. v. Eximias Pharm. Corp., 248 F. Supp. 2d 31, 38 (D.R.I. 2003) (quoting Stewart Org., Inc. v. Ricoh Corp., 487 U.S. 22, 29 (1988))). In addition to the convenience of the parties and witnesses, courts in this circuit will consider the following public and private interest factors to determine whether an action should be transferred: “(1) ease of access to sources of proof; (2) availability of compulsory process to compel attendance of witnesses; (3) cost of attendance of willing witnesses; (4) ease of a view of premises, if necessary; (5) enforceability of the judgment, if obtained; (6) advantages and obstacles to a fair trial; (7) status of the court's trial calendar; and (8) familiarity of forum with applicable state law.” Emissive Energy Corp. v Armament Sys. & Procedures, Inc., No. CA 03- 528L, 2004 US Dist LEXIS 18437, at *14-15 (D.R.I. Aug. 2, 2004) (citing Boothroyd Dewhurst, Inc. v. Bd. of Trs. of the Leland Stanford Junior Univ., C.A. No. 92-0075 P, 1993 U.S. Dist. LEXIS 20855, at *18-19 (D.R.I. July 8, 1993)) (internal citations omitted); see Gulf Oil Corp. v. Gilbert, 330 U.S. 501 (1947). Case 1:17-cv-00043-M-PAS Document 12-1 Filed 03/27/17 Page 15 of 21 PageID #: 50 11 1. This Action Could Have Been Brought in the District of New Jersey. Plaintiff is a Pennsylvania corporation and Defendant is a New Jersey limited liability company; both have principal places of business in New Jersey. Complaint, ¶¶ 1, 3; Israni Dec., ¶ 2. Hence, this action could have been brought in the District of New Jersey and New Jersey is a proper venue to litigate this matter. 2. Plaintiff’s Choice of Forum Should Be Given Little Deference. Plaintiff’s choice of venue should be given little weight, since Rhode Island is not Tristar’s home forum. “There is ordinarily a strong presumption in favor of the plaintiff's choice of forum, which may be overcome only when the private and public interest factors clearly point towards trial in the alternative forum.” Emissive Energy Corp., 2004 US Dist LEXIS 18437, at *13 (quoting Piper Aircraft Co. v. Reyno, 454 U.S. 235, 255 (1981)). Yet, this “strong presumption is greatly weakened where plaintiff’s chosen forum is not also his home.” Nash v. CVS Caremark Corp., No. 09-079S, 2009 US Dist LEXIS 63678, at *4 (D.R.I. July 1, 2009) (internal citations omitted); see also McEvily v. Sunbeam-Oster Co., Inc., 878 F. Supp. 337, 344 (D.R.I. 1994) (finding that the burden on the Defendant to show that transfer is proper is “lightened when a plaintiff has not brought suit on his 'home turf' or at the site of the activities at issue in the law suit.”). It follows that Plaintiff’s decision to bring the action in the District of Rhode Island is afforded less deference in determining whether the action should be transferred. 3. The Balance of Private and Public Interests Weighs in Favor of No Transfer. The balance of public and private interests weighs heavily in favor of transfer. The convenience of the parties and witnesses, the ease of access to evidence, the potential need to subpoena third party witnesses, and the cost of attendance of willing witnesses weigh in favor of transfer, while the remaining factors do not tip in either parties’ favor. As a result, the balance of Case 1:17-cv-00043-M-PAS Document 12-1 Filed 03/27/17 Page 16 of 21 PageID #: 51 12 interests favors transfer to the District of New Jersey. a. The District of New Jersey is More Convenient for the Parties The convenience of the parties heavily weighs in favor of transfer. Defendant is a New Jersey limited liability company and has a principal place of business in Fairfield New Jersey. Complaint, ¶ 3; Israni Dec., ¶ 2. Similarly, Plaintiff is a Pennsylvania corporation and has a principal place of business in Fairfield, New Jersey. Complaint, ¶ 1. Neither party has any locations or places of business in Rhode Island. Israni Dec., ¶¶ 2, 7. Therefore, it is undeniable that it would be more convenient for both parties to litigate this matter in New Jersey. b. The District of New Jersey is More Convenient for Potential Witnesses The convenience of witnesses also greatly weighs in favor of transfer. The following are Defendant’s potential witnesses, each of whom resides in New Jersey: 1. Devon Israni, President and CEO of Novel Brands Montville, New Jersey 2. Tom Hunziker, Sales Representative for Novel Brands Wayne, New Jersey Israni Dec., ¶ 8. Further, Plaintiff’s potential witnesses likely reside in New Jersey or outside of the United States. Tristar’s principal place of business is in New Jersey and so, any representatives from Tristar likely reside in New Jersey or otherwise, are likely to be closer to the District of New Jersey than the District of Rhode Island. Complaint, ¶ 1. Additionally, the inventors of the ‘641 Patent, namely Keith Mirchandani and Mo-Tsan Tsai, reside in Fairfield, New Jersey and Shenzhen, China, respectively. Complaint, ¶ 2, Ex. A; O’Reilly Dec., ¶ 8. Ke M.O. House Co., Ltd., Mo-Tsan Tsai’s company and assignee, is domiciled in Shenzhen, China. Complaint, ¶ 2, Ex. A; O’Reilly Dec., ¶ 9. Litigating in the District of Rhode Island is no more convenient than the District of New Jersey for those potential witnesses located abroad; however, Case 1:17-cv-00043-M-PAS Document 12-1 Filed 03/27/17 Page 17 of 21 PageID #: 52 13 since all other potential witnesses reside in New Jersey, it is more convenient to adjudicate this action in the District of New Jersey. c. The Ease of Access to Evidence and Documents Favors Transfer. Defendant’s evidence and documents pertaining to the action are located in New Jersey or with its counsel at its office in New York, New York, which is less than thirty miles from the District of New Jersey courthouse in Newark. Israni Dec., ¶ 10. Given that Plaintiff’s principal place of business is in New Jersey, its evidence and documents are also likely located in New Jersey or with its counsel in Rhode Island. See Complaint, ¶ 1. As the majority of evidence and documents are located in New Jersey, this factor unquestionably favors transfer to the District of New Jersey. d. The Availability of Compulsory Process to Compel Attendance of Witnesses Favors Transfer. The ability to compel the attendance of witnesses favors transfer. As a preliminary matter, Defendant does not anticipate having to compel the attendance of any of its witnesses. Israni Dec., ¶ 9. Further, in addition to party witnesses, as previously discussed, all likely third- party witnesses are located in New Jersey or outside of the United States. See O’Reilly Dec., ¶¶ 8-9. It is no more convenient for those witnesses that reside abroad to appear in the District of Rhode Island than in the District of New Jersey. e. The Cost of Attendance of Willing Witnesses Favors Transfer. As Defendant’s witnesses are located in the District of New Jersey and Plaintiff’s witnesses are also likely located in the District of New Jersey or outside of the United States, this factor tips in favor of transfer. See Israni Dec., ¶ 8; O’Reilly Dec., ¶¶ 8-9. The cost of attendance will be lower for those witnesses residing in New Jersey, if the action is transferred to that judicial district. The cost of attendance for foreign witnesses will be generally the same Case 1:17-cv-00043-M-PAS Document 12-1 Filed 03/27/17 Page 18 of 21 PageID #: 53 14 whether in the District of New Jersey or the District of Rhode Island. Since those witnesses that are located in the United States likely reside in New Jersey, this factor balances in favor of transfer. f. The Remaining Interest Factors Are Neutral. The ease of a view of premises, enforceability of the judgment, advantages and obstacles to a fair trial, status of the court’s trial calendar, and familiarity of forum with applicable state law are neutral factors that neither weigh in favor of transfer or no transfer. 4. It is in the Interests of Justice to Transfer the Action to the District of New Jersey. The interests of justice also warrant transfer of this action to New Jersey. Three similar proceedings have been filed by Plaintiff against other third-parties for the infringement of the ‘641 Patent in New Jersey. O’Reilly Dec., ¶ 4. Those actions are proceeding and have advanced beyond the pleading stage. O’Reilly Dec., ¶ 6. Conversely, the two related cases filed in this jurisdiction have not progressed past the Complaint, and in light of the New Jersey Actions, it seems unlikely they will. O’Reilly Dec., ¶¶ 5, 7. Consequently, this action should be transferred to the District of New Jersey. Case 1:17-cv-00043-M-PAS Document 12-1 Filed 03/27/17 Page 19 of 21 PageID #: 54 15 IV. CONCLUSION For the foregoing reasons, this action should be dismissed for lack of personal jurisdiction and improper venue or alternatively, transferred to the United States District Court for the District of New Jersey. Dated: March 27, 2017 Respectfully submitted, HINCKLEY, ALLEN & SNYDER LLP By: /s/ Christine K. Bush Christine K. Bush (#5587) cbush@hinckleyallen.com Ryan M. Gainor (#9353) rgainor@hinckleyallen.com HINCKLEY, ALLEN & SNYDER LLP 100 Westminster Street Suite 1500 Providence, RI 02903 Telephone: (401) 274-2000 Facsimile: (401) 277-9600 Brian D. O’Reilly boreilly@ipcounselors.com Jennette Wiser jwiser@ipcounselors.com EPSTEIN DRANGEL LLP 60 East 42nd Street, Suite 2520 New York, NY 10165 Telephone: (212) 292-5390 Facsimile: (212) 292-5391 (applications for admission pro hac vice forthcoming) Attorneys for Defendant Novel Brands LLC Case 1:17-cv-00043-M-PAS Document 12-1 Filed 03/27/17 Page 20 of 21 PageID #: 55 16 CERTIFICATE OF SERVICE I hereby certify that on March 27, 2016, I caused the foregoing to be electronically filed with the Clerk of the Court using CM/ECF, which will send electronic notification of such filing to Plaintiff’s attorneys as indicated below: Brenna Anatone Force bforce@apslaw.com Jeffrey K. Techentin jtechentin@apslaw.com Adler Pollock & Sheehan P.C. One Citizens Plaza 8th Floor Providence, RI 02903 Telephone: (401) 274-7200 Facsimile: (401) 351-6147 Providence, Rhode Island By: /s/ Christine K. Bush Christine K. Bush cbush@hinckleyallen.com Ryan M. Gainor rgainor@hinckleyallen.com HINCKLEY, ALLEN & SNYDER LLP 100 Westminster Street Suite 1500 Providence, RI 02903 Telephone: (401) 274-2000 Facsimile: (401) 277-9600 Case 1:17-cv-00043-M-PAS Document 12-1 Filed 03/27/17 Page 21 of 21 PageID #: 56