United States District Court, Southern District of New York
April 13, 2000
AEROTEL, LTD., AND AEROTEL USA, INC., PLAINTIFFS,
SPRINT CORPORATION, SPRINT COMMUNICATIONS COMPANY L.P., SPRINT SPECTRUM L.P., AND TANDY CORPORATION, DEFENDANTS.
The opinion of the court was delivered by: Scheindlin, District Judge.
OPINION AND ORDER
Aerotel, Ltd. is a corporation organized under the laws of
Israel with its principal place of business in Israel. See
Amended Complaint ("Am.Cmpl."), attached as Exhibit G to the
Declaration of John Fuisz, defendants' attorney, in Support of
Defendant Sprint Corporation's Motion to Dismiss and/or Transfer
and for a Protective Order Staying Discovery ("Fuisz Decl."), ¶
3. Aerotel, Ltd. is the assignee of U.S. Patent No. 4,706,275
(the "`275 Patent") which protects an invention for making
prepaid telephone calls. Id. ¶ 9. Aerotel U.S.A., Inc. is a
wholly owned subsidiary of Aerotel, Ltd. and is its exclusive
U.S. licensing representative. Id. ¶ 4. Sprint Corporation is
a corporation organized under the laws of Kansas with its
principal place of business in Kansas. Id. ¶ 5. Sprint
Communications Company L.P. ("Sprint Communications") and Sprint
Spectrum L.P. ("Sprint Spectrum") are limited partnerships
wholly owned by Sprint Corporation. Id. ¶¶ 6-7, 14. Tandy
Corporation is a Delaware corporation which has a place of
business in New York. Id. ¶ 8.
Aerotel, Ltd. and Aerotel, U.S.A., Inc. (collectively
"Aerotel") sued defendant Sprint Corporation in the Southern
District of New York for its alleged infringement of the '275
Patent by filing a Complaint on November 5, 1999. See Original
Complaint ("Cmpl."), attached as Exhibit A to the Fuisz
Declaration. Aerotel mailed the Original Complaint to Office of
the President, Sprint Corporation, 380 Madison Avenue, New York,
New York 10022. According to Sprint Corporation, it does not own
or lease any property at that address. See Declaration of
Michael Hyde, Assistant Secretary of Sprint Corporation, in
Support of Defendant Sprint Corporation's Motion to Dismiss
and/or Transfer Plaintiff Aerotel's Complaint for Lack of
Personal Jurisdiction ("Hyde Decl."), sworn to on December 8,
1999, ¶ 5. On December 8, 1999, Sprint Corporation filed a
declaratory judgment action against Aerotel, Ltd. in the United
States District Court for the District of Kansas. See Fuisz
Decl. Ex. C. Aerotel, Ltd. was served with the declaratory
judgment complaint on December 10, 1999. Plaintiffs then filed
and served an Amended
Complaint on December 15, 1999 naming Sprint Corporation as well
as Sprint Communications, Sprint Spectrum and Tandy Corporation
as defendants. See Am. Cmpl. ¶¶ 5-8.
Defendant Sprint Corporation now moves, inter alia, under
Federal Rules of Civil Procedure 12(b)(2) and 12(b)(3) for
dismissal of the complaint for lack of personal jurisdiction and
for improper venue. Sprint Corporation alternatively moves under
28 U.S.C. § 1404(a) to have this action transferred to the
District of Kansas where it will be joined with the declaratory
judgment action, Sprint Corporation, et al., v. Aerotel, Ltd.
99 Civ. 2547 (JWL).*fn1 Sprint Communications, Sprint
Spectrum and Tandy Corporation join in Sprint Corporation's
motion to dismiss and also move for a transfer of venue pursuant
to 28 U.S.C. § 1404(a). For the following reasons, Sprint
Corporation's motion to dismiss is denied and its motion to
transfer venue is denied. The remaining motions to dismiss and
transfer venue are denied.
A. Personal Jurisdiction — Sprint Corporation
The burden of proof to establish personal jurisdiction is on
Aerotel, see Kernan v. Kurz-Hastings, Inc., 175 F.3d 236, 240
(2d Cir. 1999) (citation omitted), and the required standard of
proof is by a preponderance of the evidence. See First
Nationwide Bank v. Gelt Funding Corp., 27 F.3d 763, 771 (2d
Cir. 1994). Although in patent cases the court applies the
uniform body of Federal Circuit law, see Beverly Hills Fan Co.
v. Royal Sovereign Corp., 21 F.3d 1558, 1564-65 (Fed. Cir.
1994), the court will apply the relevant state long-arm statute
when determining whether it has personal jurisdiction over a
defendant. See Graphic Controls Corp. v. Utah Med. Prods.,
Inc., 149 F.3d 1382, 1386 n. 2 (Fed. Cir. 1998). Accordingly,
New York law will determine whether this Court has jurisdiction
over Sprint Corporation. As explained by the Federal Circuit:
Determining whether jurisdiction exists over an
out-of-state defendant involves two inquiries:
whether a forum state's long-arm statute permits the
assertion of jurisdiction and whether assertion of
personal jurisdiction violates federal due process.
With regard to the federal constitutional due process
analysis of the defendant's contacts with the forum
state in patent cases, we do not defer to the
interpretations of other federal and state courts.
However, in interpreting the meaning of state
long-arm statutes, we elect to defer to the
interpretations of the relevant state and federal
courts, including their determinations regarding
whether or not such statutes are intended to reach to
the limit of federal due process.
Graphic Controls, 149 F.3d at 1385 (citations and footnote
"Under New York law there are two ways in which a court may
exercise personal jurisdiction over a non-domiciliary
corporation: (1) If the corporation `does business' in New York,
jurisdiction may be exercised pursuant to N.Y. CPLR § 301.(2)
Even if the corporation does not `do business' in New York,
jurisdiction may be exercised if the corporation falls under New
York's long-arm statute (N.Y. CPLR § 302)." King v. Best
Western Country Inn, 138 F.R.D. 39, 41 (S.D.N.Y. 1991). Under
the "doing business test", a foreign corporation is amenable to
suit in New York if it is "`engaged in such a continuous and
systematic course of "doing business" here as to warrant a
finding of its "presence" in this jurisdiction.'" Frummer v.
Hilton Hotels Int'l, Inc., 19 N.Y.2d 533, 536, 281 N.Y.S.2d 41,
227 N.E.2d 851 (1967) (quoting Simonson v. International Bank,
14 N.Y.2d 281, 285, 251 N.Y.S.2d 433, 200 N.E.2d 427 (1964)).
Alternatively, although a corporation may not be doing business
so as to subject it to general jurisdiction, it may be subject
to specific jurisdiction. Section 302(a)(1) provides for
jurisdiction where the defendant "transacts any business within
the state or contracts anywhere to supply goods or services in
the state" and the cause of action arises from such acts. N.Y.
CPLR § 302(a)(1) (McKinney 1990).
For a court to assert jurisdiction over a defendant
under section 302(a)(1), the plaintiff must meet the
following two prong test: (1) the defendant's
business activities in New York must be activities by
which the defendant projects itself into New York in
such a way as to purposefully avail itself of the
benefits and protections of New York laws and (2) the
plaintiffs cause of action must arise out of that
business activity within the state.
Graphic Controls, 149 F.3d at 1386.
Sprint Corporation is a holding company that does not transact
telecommunications services, including pre-paid calling
services, in New York. See Hyde Decl. ¶¶ 3-4. Moreover, it does
not have any employees authorized to act on its behalf in New
York. Id. ¶ 5. Sprint Corporation is not licensed to do
business in New York and has never purposefully availed itself
of the privilege of doing business in New York. Id. ¶¶ 4-5.
In its Amended Complaint, Aerotel has alleged that "Sprint
Communications and Sprint Spectrum are wholly owned by Sprint
Corporation, and Sprint Corporation exercises control over
Sprint Communications and Sprint Spectrum and their operations,
including the alleged infringing activities of Sprint
Communications and Sprint Spectrum."*fn2 Am. Cmpl. ¶ 14
(emphasis added). Aerotel advances its argument that Sprint
Corporation is present in New York by reason of its management
and control of Sprint Communications and Sprint Spectrum in a
number of ways. First, Aerotel points to the common management
Sprint Corporation shares with its subsidiaries. Aerotel cites
the 1998 Form 10-K filed by Sprint Spectrum which discloses that
at least four of its sixteen officers and board members are
shared in common with Sprint Corporation.*fn3 Compare
Sprint Corporation's 1999 Form 10-K, attached as Exhibit 1 to
the Declaration of Joshua S. Broitman, plaintiffs' attorney, in
Opposition to Sprint Corporation's Motion to Dismiss the
Complaint or Transfer, sworn to January 13, 2000 ("Broitman
Decl."), at 17/83 with id. at 16/307. Aerotel also cites the
1999 Form 10-K of Sprint Corporation in further support of a
finding of common management. See id., Ex. 1 at 16/307.
Presumably, the two officers of Sprint Corporation holding the
title "President — Long Distance Division" and "President —
Sprint PCS" also overlap with the businesses of Sprint
Communications and Sprint Spectrum. Aerotel also cites portions
of the deposition testimony of Michael Hyde submitted in an
unrelated case, Berrios v. Sprint Corp. and Sprint
Communications Co. L.P., 1997 WL 777945, 1997 U.S.Dist. LEXIS
19259 (E.D.N.Y. 1997).*fn4 During that deposition,
Mr. Hyde stated that ten to twelve of the senior executives of
Sprint Corporation hold comparable positions at Sprint
Communications. He also stated that Sprint Communications has no
other senior executive management other than those ten to twelve
people. As Mr. Hyde is the Assistant Secretary of Sprint
Corporation, these statements are admissions of Sprint
Corporation and may be considered pursuant to Federal Rule of
Evidence 801(d)(2). Aerotel's evidence thus shows considerable
overlap in the management of Sprint Corporation and Sprint
Communications and, to a lesser extent, Sprint Spectrum.
Second, Aerotel alleges that Sprint Corporation exercises
operational and financial control over its subsidiaries. In
support of this statement, Aerotel cites Sprint Corporation's
1999 Form 10-K. See Broitman Decl., Ex. 1. That document
states that the shareholders of Sprint Corporation approved the
formation of the FON Group and FON stock and the PCS Group and
PCS stock. Id. at 3/307. The value of the PCS stock is
intended to reflect the performance of Sprint's domestic
wireless personal communications services operations and the
value of the FON stock is intended to reflect the performance of
all of Sprint's other operations. Id. A discussion of
conflicts of interest between FON and PCS ensues and an example
is offered where the Sprint Board may "make operational and
financial decisions with respect to one Group that could be
considered to be detrimental to the other Group." Id. at
4/307. This discussion only tangentially supports the
proposition that Sprint Corporation exercises operational and
financial control over all of the entities engaged in its global
Finally, Aerotel notes that Sprint Corporation presents its
telecommunications services along with those of its subsidiaries
to the marketplace under the common trade name "Sprint" without
regard to its complex corporate structure. Aerotel points to a
1998 Sprint web page which does, in fact, talk generically about
Sprint as a collective entity. See Broitman Decl. Ex. 4 at 3
("Sprint is a global communications company . . . Sprint built
and operates the United States' only nationwide all-digital,
fiber optic network . . . Sprint has $15 billion in annual
revenues."). These statements, intended to be read by the
consuming public, cannot create a single entity structure given
the sophistication and complexity of today's corporate world. In
addition, the copyright at the bottom of the web page is in the
name of Sprint Communications Company, L.P. providing further
proof of the independence of that company from Sprint
Corporation. Thus, only Aerotel's first argument — that Sprint
Corporation is present in New York because of its overlapping
management with Sprint Communications and Sprint Spectrum — is
persuasive but needs to be more fully developed.
In patent cases, it is fundamental that "`the corporate entity
should be recognized and upheld, unless specific, unusual
circumstances call for an exception.'" Manville Sales Corp. v.
Paramount Sys., Inc., 917 F.2d 544, 552 (Fed. Cir. 1990)
(quoting Zubik v. Zubik, 384 F.2d 267, 273 (3d Cir. 1967)).
"Courts are reluctant to disregard the separate existence of
related corporations . . . and have consistently given
substantial weight to the `presumption of separateness.'"
Kashfi v. Phibro-Salomon, Inc., 628 F. Supp. 727, 732 (S.D.N.Y.
1986). However, "where a corporate subsidiary is essentially a
`separately incorporated department or instrumentality' of a
foreign corporation, the activities of the subsidiaries will be
attributed to the foreign parent for purposes of determining the
parent's amenability to personal jurisdiction in New
York."*fn5 Canterbury Belts Ltd. v. Lane Walker Rudkin,
869 F.2d 34, 40 (2d Cir. 1989) (citations omitted). As explained
by the Second Circuit,
In determining whether the subsidiary is a "mere
department" of the parent — the other New York
jurisdictional basis — the court must consider four
factors, which in Beech Aircraft we summarized as
follows: first, "common ownership" — which is
"essential" -; second, "financial dependency of the
subsidiary on the parent corporation;" third, "the
degree to which the parent corporation interferes in
the selection and assignment of the subsidiary's
executive personnel and fails to observe corporate
formalities;" and fourth, "the degree of control over
the marketing and operational policies of the
subsidiary exercised by the parent."
Jazini v. Nissan Motor Co., Ltd., 148 F.3d 181, 184-85 (2d
Cir. 1998) (quoting Volkswagenwerk Aktiengesellschaft v. Beech
Aircraft Corp., 751 F.2d 117, 120-22 (2d Cir. 1984)).*fn6
At present, Aerotel's allegation that Sprint Communications
and Sprint Spectrum are mere departments of Sprint Corporation
is not sufficient to establish jurisdiction by a preponderance
of the evidence. However, this standard is not required at this
stage of the litigation. As explained by the Second Circuit:
Prior to discovery, a plaintiff challenged by a
jurisdiction testing motion may defeat the motion by
pleading in good faith, . . . legally sufficient
allegations of jurisdiction. At that preliminary
stage, the plaintiffs prima facie showing may be
established solely by allegations. After discovery,
the plaintiff's prima facie showing, necessary to
defeat a jurisdiction testing motion, must include an
averment of facts that, if credited by the trier,
would suffice to establish jurisdiction over the
defendant. At that point, the prima facie showing
must be factually supported.
Ball v. Metallurgie Hoboken-Overpelt, 902 F.2d 194
, 197 (2d
Cir. 1990) (citations omitted).
Here, the allegation that Sprint Communications and Sprint
Spectrum are mere departments of Sprint Corporation remains
conclusory despite the evidence of overlapping management and
the fact that any doubts are to be resolved in the light most
favorable to the plaintiff. See Pilates, Inc. v. Pilates Inst.,
Inc., 891 F. Supp. 175, 178 (S.D.N.Y. 1995) However, "[i]n
deciding a pretrial motion to dismiss for lack of personal
jurisdiction a district court has considerable procedural
leeway." Marine Midland Bank, N.A. v. Miller, 664 F.2d 899,
904 (2d Cir. 1981). At this time, Sprint Corporation's motion to
dismiss is denied so that Aerotel can take jurisdictional
discovery. Such discovery should be directed to ascertaining the
precise level of interrelatedness between Sprint Corporation and
Sprint Spectrum/Sprint Communications. After such discovery
takes place, Sprint Corporation may renew its motion to dismiss
for lack of personal jurisdiction if it deems it appropriate.
Venue in suits for patent infringement is governed solely and
exclusively by 28 U.S.C. § 1400(b). See Stonite Prod. Co. v.
Melvin Lloyd Co., 315 U.S. 561, 563, 62 S.Ct. 780,
86 L.Ed. 1026 (1942). That statute provides: "Any 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." Where a corporation resides is governed by
28 U.S.C. § 1391(c) which reads:
(c) For purposes of venue under this chapter, a
defendant that is a corporation shall be deemed to
reside in any judicial district in which it is
personal jurisdiction at the time the action is
For purposes of this portion of the Opinion and Order, it will
be assumed that Sprint Corporation is subject to personal
jurisdiction in New York and, therefore, that the New York venue
is also proper as to it. Even though venue in the Southern
District of New York is proper as to the remaining defendants
and is assumed proper as to Sprint Corporation, the defendants
seek to transfer venue to the District of Kansas. It is to this
request that I now turn.
C. Motion to Transfer
i. First Filed Rule
"Where two courts have concurrent jurisdiction over an action
involving the same parties and issues, courts will follow a
`first filed' rule whereby the court which first has possession
of the action decides it." 800-Flowers, Inc. v.
Intercontinental Florist, Inc., 860 F. Supp. 128, 131 (S.D.N.Y.
1994) (citation omitted). There is a strong presumption in favor
of the forum of the first-filed suit. Id. "[W]here there are
two competing lawsuits, the first suit should have priority,
absent the showing of balance of convenience in favor of the
second action, or unless there are special circumstances which
justify giving priority to the second." Motion Picture Lab.
Technicians Local 780, I.A.T.S.E. v. McGregor & Werner, Inc.,
804 F.2d 16, 19 (2d Cir. 1986) (citation omitted). "Generally, a
`special circumstances' exception to the first filed rule exists
where `forum shopping alone motivated the choice of the situs
for the first suit.'"*fn7 800-Flowers, 860 F. Supp. at 132
(quoting William Gluckin & Co. v. International Playtex Corp.,
407 F.2d 177, 178 (2d Cir. 1969)).
Here, defendants argue that Aerotel's Original Complaint is a
nullity because of improper service and, therefore, that the
declaratory judgment action filed in Kansas is the first-filed
and should take priority. On the other hand, Aerotel argues that
under Rule 15(c) of the Federal Rules of Civil Procedure, its
Amended Complaint relates back to the date of the Original
Complaint and is thus the first-filed. Defendants reject this
argument stating that Aerotels' Amended Complaint cannot relate
back under Rule 15(c) because Sprint Corporation was never
served and, therefore, the Court never acquired jurisdiction
over the first action.
Rule 15 provides for the amendment of pleadings "once as a
matter of course at any time before a responsive pleading is
served." Fed.R.Civ.P. 15(a). Where the amendment changes the
party against whom the claim is asserted, Rule 15(c) provides
for the "relation back" of an amendment to the date of the
original proceeding provided the following four conditions are
1. The claim asserted in the amended complaint
arose out of the conduct, transaction, or
occurrence set forth in the original complaint.
2. The new party named in the amended complaint has
received notice such that it will not be prejudiced
in maintaining a defense on the merits.
3. The new party knew or should have known that,
but for a mistake concerning the identity of the
proper party, the action would have been brought
against the new party.
4. The second and third conditions must be
satisfied within the 120 day period for service of
summons and complaint prescribed by Rule 4(m).
See Fed.R.Civ.P. 15(c).
Here, all four conditions have been met. First, the alleged
patent infringement claims arise out of the same transactions,
namely, the sale of infringing prepaid telephone cards in New
York. Second, Sprint Communications and Sprint Spectrum received
notice no later than December 1999 when the Amended Complaint
was served upon them. Third, given the relationship between
Sprint Corporation and the two limited partnerships — Sprint
Communications and Sprint Spectrum — both of which sell prepaid
telephone cards in New York, it is reasonable to assume that
they knew this action would have been brought against them but
for Aerotel's mistake in assuming that Sprint Corporation was
selling the telephone cards. The fourth condition is clearly met
given the close proximity in time between the filing of the
Original Complaint and the filing and service of the Amended
Complaint. It thus appears that all of the conditions found in
Rule 15(c) have been met and, as a result, the relation back
Defendants' objection to the applicability of the "relation
back" doctrine is not supported by precedent. Defendants cite
Magno v. Canadian Pac. Ltd., 84 F.R.D. 414, 415 (Mass. 1979),
and In re Allbrand Appliance & Television Co., Inc.,
875 F.2d 1021, 1024 (2d Cir. 1989), for the proposition that Rule 15(c)
does not apply where the defendant in the original action was
never properly served. What these cases stand for, however, is
that "an amendment changing a party does not relate back when
the original party was not even served with process within the
[120 day] statutory period." Magno, 84 F.R.D. at 415. This is
not in issue as it is undisputed that Sprint Corporation was
properly served with the Amended Complaint on December 15, 1999,
approximately six weeks after the filing of the Original
Complaint. Thus, Aerotel was the first to file and its choice of
forum should be respected. In any event, even if defendants are
correct in their assertion that Kansas wins the "first-filed"
contest, I note that "district courts need not slavishly adhere
to the first filed rule, and that where circumstances dictate,
`great significance should not be placed upon the dates the
actions were filed.'" 800-Flowers, 860 F. Supp. at 133 (quoting
Ivy-Mar Co. v. Weber-Stephen Prods. Co., 93 Civ. 5973, 1993 WL
535166, at *2 (S.D.N.Y. Dec. 21, 1993)). Therefore, the next
question is whether Aerotel's suit against defendants other than
Sprint Corporation should remain here regardless of the
ii. Other Factors
The burden of justifying a transfer of venue under
28 U.S.C. § 1404(a) is on the moving party.*fn8 See Factors Etc., Inc.
v. Pro Arts, Inc., 579 F.2d 215, 218 (2d Cir. 1978). The
factors to be considered in deciding such a motion include:
(1) the convenience of witnesses; (2) the location of
relevant documents and the relative ease of access to
sources of proof; (3) the convenience of the parties;
(4) the locus of the operative facts; (5) the
availability of process to compel attendance of
unwilling witnesses; (6) the relative means of the
parties; (7) a forum's familiarity with the governing
law; (8) the weight accorded a plaintiffs choice of
forum; and (9) trial efficiency and the interests of
justice, based on the totality of circumstances.
800-Flowers, 860 F. Supp. at 133.
Here, most of the above factors weigh in favor of maintaining
this action in the
Southern District of New York. An analysis of each factor
(1) & (2) The Convenience of Witnesses and Location of
"The convenience of both party and non-party witnesses is
probably considered the single most important factor in the
analysis of whether a transfer should be granted."*fn9 See
Howard, 1997 WL 107633, at *2 (internal quotation marks and
citation omitted). The remaining defendants are accused of
infringing Aerotel's '275 patent by "making, using, selling and
offering for sale, in the United States and in the District [of
New York], prepaid telephone card products and services
employing the patented invention." Am. Cmpl. ¶¶ 11-13.
Presumably, the witnesses with relevant information and any
pertinent documents will be located in New York.*fn10
Moreover, to succeed on a transfer motion, the moving party must
"`clearly specify the key witnesses to be called and must make a
general statement of what their testimony will cover.'" Panama
Processes, S.A. v. Cities Serv. Co., 650 F.2d 408, 417 (2d Cir.
1981) (J. Maletz, dissenting) (quoting Factors Etc., 579 F.2d
at 218). Defendants have failed to make this necessary showing.
(3) The Convenience of the Parties
With regard to convenience of the parties, it has been held
that where the movant has an extensive nationwide network, the
scale tilts slightly in favor of the nonmovant. 800-Flowers,
860 F. Supp. at 134. Even if this does not hold true, "[w]here
the balance of convenience is in equipoise, plaintiffs choice of
forum should not be disturbed." Ayers v. Arabian American Oil
Co., 571 F. Supp. 707, 709 (S.D.N.Y. 1983). Thus, this factor
favors New York.
(4) The Locus of Operative Facts
The location of the operative facts is traditionally an
important factor to be considered in deciding venue. See Mobile
Video Servs., Ltd. v. National Ass'n of Broadcast Employees and
Technicians, AFL-CIO, 574 F. Supp. 668, 670-71 (S.D.N.Y. 1983).
Here, this factor is neutral as the validity and enforceability
of the '275 Patent is not geographically dependent.
(5) Availability of Process
Because Sprint can compel the testimony of its own employees
without the need for subpoena, this factor is also neutral.
(6) Means of the Parties
Where a disparity exists between the means of the parties, a
court may consider the relative means of the parties in
determining venue. See Hernandez v. Graebel Van Lines,
761 F. Supp. 983, 988-89 (E.D.N.Y. 1991). Here, the disparity in
economic resources between Aerotel and Sprint favors maintaining
the action in plaintiffs' chosen forum.
(7) Forum's Familiarity with Governing Law
This factor is neutral as both the Southern District of New
York and the District of Kansas are equally well-equipped to
decide the patent claims in issue.
(8) Plaintiffs Choice of Forum
"[U]nless the balance is strongly in favor of the defendant,
the plaintiffs choice of forum should rarely be disturbed."
Seagoing Uniform Corp. v. Texaco, Inc., 705 F. Supp. 918, 936
(S.D.N.Y. 1989) (citing Gulf Oil Corp. v. Gilbert,
330 U.S. 501, 508, 67 S.Ct. 839, 91 L.Ed. 1055 (1947)). Based
on the preceding factors, it can hardly be said that the balance
strongly favors defendants.
(9) Interests of Justice
This last factor also militates in favor of a New York forum.
One reason is that the Kansas action is one for declaratory
judgment. As such, that court cannot award damages to the
infringing party should it find the '275 Patent valid and
enforceable. Second, the Kansas court may not have jurisdiction
over Aerotel, Ltd. and the action may have to be dismissed.
See Defendant [Aerotel's] Motion to Dismiss and Alternative
Motion to Transfer, attached as Exhibit 5 to the Broitman
Declaration. If I were to transfer this case to Kansas only to
find the Kansas court lacks jurisdiction over Aerotel, Ltd.,
Aerotel would, in effect, have no remedy other than bringing
another action in this or some other forum. Surely such a result
is not in the interests of justice.
In short, the transfer of venue factors either favor this
district or are neutral. I have found nothing that would warrant
transferring this action to the District of Kansas where it
would be joined with the pending declaratory judgment action.
Accordingly, the case will proceed in New York.*fn11
For the reasons set forth above, Sprint Corporation's motion
to dismiss for lack of personal jurisdiction and improper venue
is denied, without prejudice, subject to renewal after
sufficient jurisdictional discovery has taken place. The
remaining motions to transfer venue are denied. A status
conference is scheduled for April 18, 2000 at 4:30 p.m.