The opinion of the court was delivered by: CHARLES S. HAIGHT, JR.
Plaintiff, Rocket Jewelry Box, Inc., ("Rocket") brought this action against defendant, Noble Gift Packaging, Inc., ("Noble") alleging patent infringement under 35 U.S.C. § 271. Defendant has moved to transfer this action to the District of New Jersey, alleging that plaintiffs have improperly laid venue in the Southern District of New York under 28 U.S.C. § 1400(b) and, alternatively, that the court should transfer venue to a more convenient forum pursuant to 28 U.S.C. § 1404(a). For the reasons discussed below, Rocket's action is dismissed without prejudice as improperly laid in the Southern District.
Noble is a wholesale distributor of jewelry boxes to retail distributors located in the Southern District and throughout the United States. Rocket claims that Noble's "Paris line" of jewelry boxes infringes two patents that it holds.
Rocket is a New York corporation whose principal place of business is located in the Southern District of New York at 125 East 144th Street, Bronx, New York. Noble is a New Jersey corporation which maintained at the time this suit was commenced a place of business in the Eastern District of New York at 1449 37th Street, Brooklyn, New York, and which now maintains its only office as well as its warehouse and distribution facilities in the District of New Jersey at 141 Lanza Avenue, Garfield, New Jersey. Noble has never had a regular and established place of business in the Southern District.
Noble uses an independent marketing agent to advertise its products, including the allegedly infringing "Paris line," in a catalog which is mailed several times a year to roughly 10,000 to 50,000 customers in the Southern District and nationwide. Noble has no access to the customer list and does not itself mail the catalogs, which are published in Canada and mailed from Florida. Noble obtains all sales orders from customers who initiate telephone calls to its New Jersey offices. Noble maintains no sales agents or offices located in the Southern District.
Noble has obtained purchase orders, made invoices, and received payment for its advertised products from customers in the Southern District. Noble derives two percent of its annual revenues from sales of its products in the Southern District. The record does not disclose, however, whether Noble has sold any allegedly infringing "Paris line" in the Southern District.
Venue refers to locality; it concerns the forum where a lawsuit may be brought and judicial authority exercised. By limiting a plaintiff's choice of forum beyond those courts which have personal and subject matter jurisdiction, venue statutes protect defendants from litigating in an unfair or inconvenient location. Wright, Miller, & Cooper, Federal Practice and Procedure: Jurisdiction 2d § 3801.
The plaintiff need not include in his complaint an allegation showing proper venue. Ripperger v. A.C. Allyn and Co., 113 F.2d 332, 334, (2d. Cir.), cert. denied, 311 U.S. 695, 61 S. Ct. 136, 85 L. Ed. 450 (1940); Ferraioli v. Cantor, 259 F. Supp. 842, 846 (S.D.N.Y. 1966). Accordingly, the defendant bears the burden of establishing improper venue. Bowles v. American Distilling Co., 62 F. Supp. 20, 24, (S.D.N.Y. 1945); app. dismissed sub. nom. Porter v. American Distilling Co., 157 F.2d 1012 (2d. Cir. 1946).
B. Principles of Personal Jurisdiction
This Court has exclusive and original subject matter jurisdiction over this patent infringement action, pursuant to 28 U.S.C. § 1338(a) and 35 U.S.C. § 281. When deciding personal jurisdiction in a suit arising from a federal question, a district court must apply the law of the state in which it sits, unless a federal statute specifically authorizes service of process on a party not an inhabitant of or found within the forum state. See Fed.R.Civ.P. 4(e); Omni Capital International v. Rudolf Wolff, 484 U.S. 97, 104-105, 111, 108 S. Ct. 404, 406, 413, 98 L. Ed. 2d 415 (1987); Canterbury Belts Ltd. v. Lane Walker Rudkin Ltd., 869 F.2d 34, 40 (2d. Cir. 1989); Kinetic Instruments, Inc. v. Lares, 802 F. Supp. 976, 981 (S.D.N.Y. 1992). Because no such federal authorization exists for patent infringement actions, New York law ...