On January 21, 2009, the Research Foundation of State University of New York ("Plaintiff" or "Research Foundation") commenced this action against Defendants seeking a preliminary injunction, permanent injunction, and damages resulting from Defendants' alleged infringement of Plaintiff's patent, United States Patent No. 6,831,459 (the "'459 patent"). Compl. (Dkt. No. 1). Defendants are Bruker Corporation (f/k/a Bruker Biosciences Corporation), a Delaware corporation with its principle place of business in Massachusetts; Bruker BioSpin Corporation, a Massachusetts corporation with its principle place of business in Massachusetts; Bruker BioSpin GmbH ("Bruker Germany"), a German corporation with its principle place of business in Germany; and Varian, Inc., a Delaware Corporation with its principle place of business in California. Compl. (Dkt. No. 1). Presently before the Court is Defendant Bruker Germany's Motion to dismiss pursuant to Federal Rules of Civil Procedure 12(b)(2) and 12(b)(3) on the grounds that (1) the Court lacks personal jurisdiction and (2) venue is improper. Mot. to dismiss (Dkt. No. 39). The U.S.-based Bruker Defendants and Varian have consented to the Court's jurisdiction. Defs.' Answer ¶ 7 (Dkt. No. 17); Def.'s Answer ¶ 6 (Dkt. No. 14).
For the reasons discussed below, this Court does not have personal jurisdiction over Defendant Bruker Germany. Therefore, Defendant's Motion to dismiss is granted.
Research Foundation is a New York nonprofit educational corporation headquartered in Albany County. Compl. ¶ 1 (Dk. No. 1). Research Foundation is the owner of all rights, title, and interest in and under the '459 patent entitled "Method of Using G-matrix Fourier Transformation Nuclear Magnetic Resonance (GFT NMR) Spectroscopy for Rapid Chemical Shift Assignment and Secondary Structure Determination of Proteins." Compl. ¶ 11 (Dkt. No. 1). A method patent, the '459 patent discloses a technique for using multi-dimensional Fourier transformation methods to perform NMR experiments. Compl. ¶ 11 (Dkt. No. 1); Pl.'s Mem. in Opp'n at 5 (Dkt. No. 43). Defendant Bruker Germany is a foreign corporation having offices and employees only in Germany. Def.'s Mem. in Supp. at 2 (Dkt. No. 39). Collectively, the Bruker Defendants manufacture NMR spectrometers and a software package called TopSpin, which is bundled with new spectrometers or sold separately to customers seeking software upgrades for existing NMR systems. Pl.'s Mem. in Opp'n at 5 (Dkt. No. 43). Plaintiff alleges that Defendants infringe upon the '459 patent by "making, using, selling, offering for sale, and/or importing into the United States... spectrometers and related products that practice the methods of the '459 patent." Compl. ¶ 13--14. Subject matter jurisdiction exists pursuant to 28 U.S.C. § 1332 due to diversity of citizenship and a sufficient amount-in-controversy; the action also arises under the federal patent laws such that subject matter jurisdiction is also proper under 28 U.S.C. § 1331.
Defendant Bruker Germany moves to dismiss this action pursuant to Federal Rule of Civil Procedure12(b)(2) on the grounds that the Court lacks personal jurisdiction. Bruker Germany claims that it has made no sales in New York, is not licensed to do business in New York, has no offices, employees, business records, agents, property, or other contacts with or within New York, and does not target customers, advertise or market in New York, nor derive revenue from business activities in New York. See Def. Mem. in Supp. at 1. Plaintiff asserts that personal jurisdiction is proper because "[e]ach Defendant has conducted and does conduct business within the State of New York [and] directly or through intermediaries (including distributors, retailers, and others), ships, distributes, offers for sale, and sells its products in the United States, the State of New York, and the Northern District of New York." Compl. ¶ 7 (Dkt. No. 1). Further, "[e]ach Defendant has purposefully and voluntarily placed one or more of its infringing products... into the stream of commerce with the expectation that they will be purchased by consumers in the Northern District of New York." Compl. ¶ 7 (Dkt. No. 1). Plaintiff alleges that the "products at issue are offered for sale on Bruker websites at both www.bruker.com and www.bruker-biospin.com in the State of New York and the Northern District of New York." Compl. ¶ 8 (Dkt. No. 1). Finally, Plaintiff alleges that "[e]ach Defendant has committed the tort of patent infringement within the State of New York and, more particularly, within the Northern District of New York." Compl. ¶ 7 (Dkt. No. 1).
"When a defendant moves to dismiss a complaint under Rule 12(b)(2) for want of personal jurisdiction, courts must perform a two-part analysis. First, personal jurisdiction over a defendant must be established under the law of the state where the federal court sits.... Second, if jurisdiction is established under the governing statute, courts must determine whether the exercise of jurisdiction under the relevant state law would violate the defendant's due process rights." Harris v. Ware, No. 04 CV 1120, 2005 WL 503935, at *1--2 (E.D.N.Y. Mar. 4, 2005) (citing Bank Brussels Lambert v. Fiddler Gonzalez & Rodriguez, 171 F.3d 779, 784 (2d Cir. 1999)). See also Rusyniak v. Gensini, 629 F. Supp. 2d 203, 215 (N.D.N.Y. 2009); Daou v. Early Advantage, LLC, 410 F. Supp. 2d 82, 88 (N.D.N.Y. 2006). On such a motion, "'plaintiff bears the burden of showing that the court has jurisdiction over the defendant.'" Stein Fibers, Ltd. v. Bondex Telas Sin Tejar, No. 1:08-CV-210, 2009 WL 385412, at *2 (N.D.N.Y. Feb. 10, 2009) (Kahn, J.) (quoting Metropolitan Life Ins. Co. v. Robertson-Ceco Corp., 84 F.3d 560, 566 (2d Cir. 1996)). However, "[p]rior to discovery, a plaintiff need only make a prima facie showing that jurisdiction exists and can make this showing through his own affidavits, pleadings and supporting materials." Stein Fibers, 2009 WL 385412, at *2 (citing Hollenbeck v. Comeq, Inc., No. 5:03-CV-0825, 2007 WL 2484299, at *2 (N.D.N.Y. Aug. 28, 2007) (Kahn, J.)). "All pleadings and affidavits are construed in the light most favorable to the plaintiff, and all doubts are resolved in the plaintiff's favor." Stein Fibers, 2009 WL 385412, at *2 (citing CutCo Indus., Inc. v. Naughton, 806 F.2d 361, 365 (2d Cir. 1986)).
When analyzing a motion pursuant to Rule 12(b)(3), "a district court may dismiss a case if an alternative forum exists where the case may be heard, and if trial in the present forum 'would be oppressive and vexatious to a defendant.'" Daou, 410 F. Supp. 2d at 89 (quoting Minibooster Hydraulics A/S v. Scanwill Fluid Power ApS, 315 F. Supp. 2d 286, 290 (W.D.N.Y. 2004)). An alternative forum is proper if: "(1) the defendants are subject to service of process there and (2) the forum permits litigation of the subject matter of the dispute." Minibooster Hydraulics, 315 F. Supp. 2d at 290. A "strong presumption exists in favor of the forum in which Plaintiff has chosen to bring suit," therefore the moving party "bears the burden of 'establish[ing] that the alternative forum is 'clearly more appropriate.'" Daou, 410 F. Supp. 2d at 89 (quoting Minibooster Hydraulics, 315 F. Supp. 2d at 290)). "Dismissal will generally be inappropriate unless 'the balance of convenience tilts strongly in favor of trial in the foreign forum.'" Id. Finally, the court "'must accept the facts alleged in the complaint as true and draw all reasonable inferences in the plaintiff's favor.'" Daou, 410 F. Supp. 2d at 89 (quoting Micromuse, Inc. v. Aprisma Mgmt. Tech., Inc., No. 05 Civ. 0894SAS, 2005 WL 1241924, at *2 (S.D.N.Y. May 24, 2005)).
Unless otherwise provided by federal law, in a diversity or federal question case, like the instant action, "'[t]he amenability of a foreign corporation to suit in a federal court... is determined in accordance with the law of the state where the court sits.'" Stein Fibers, 2009 WL 385412, at *2 (quoting Ball v. Metallurgie Hoboken-Overpelt, S.A., 902 F.2d ...