The opinion of the court was delivered by: Shira A. Scheindlin, U.S.D.J.
Bodum U.S.A. Inc. ("Bodum") brings this declaratory judgment action seeking determinations of non-infringement and invalidity respecting a patent owned by Hantover Inc. ("Hantover") for a universal knife holder. Hantver now moves to dismiss the Complaint under Rule 12(b)(2) of the Federal Rules of Civil Procedure or, in the alternative, to transfer the case to the United States District Court for the Western District of Missouri. For the following reasons, Hantover's motion to dismiss the Complaint is granted, without prejudice and with leave to replead.
The facts of the case are largely undisputed. Bodum is a Delaware
corporation with offices and its principal place of business in New
York.*fn1 Bodum is part of an international
conglomeration of companies headquartered in Switzerland.*fn2
Bodum creates and distributes kitchen products including a
line of knife block products named "BISTRO Universal Knife
Block."*fn3 Hantover is a Missouri corporation with
its headquarters and operating facilities located in Kansas City,
Missouri.*fn4 Hantover owns U.S. Patent No. 6,082,559
("the '559 patent") which is directed to a universal knife block that
Hantover commercializes under the brand name KAPOOSH.*fn5
On April 18, 2011, counsel for Hantover sent a letter to Bodum's New York office regarding the '559 patent.*fn6 The letter alleged Bodum's "BISTRO Universal Knife Block" infringed the '559 patent, and asked Bodum to cease and desist infringing activities or seek a non-exclusive license under the patent.*fn7 The letter warned that "Bodum's failure to comply with these demands will leave us no option but to advise Hantover to take whatever legal steps are necessary to enforce its valuable patent rights."*fn8
On June 29, 2011, Bodum responded by providing Hantover with copies of
four foreign patents that Bodum believed invalidated Hantover's patent
and that had never been presented to the United States Patent and
Trademark Office.*fn9 On November 2, 2011, Hantover
replied disputing Bodum's assertions of patent invalidity.*fn10
Hantover warned that it was prepared to enforce its patent
rights if Bodum continued to sell the "BISTRO Universal Knife Block"
or failed to seek a license for the '559 patent by December 2,
On November 30, 2011, Bodum filed a complaint in this Court seeking a declaratory judgment of noninfringement and invalidity of Hantover's '559 patent. On January 20, 2012, Hantover filed this motion to dismiss under Rule 12(b)(2) of the Federal Rules of Civil Procedure or, in the alternative, to transfer the case to the Western District of Missouri pursuant to section 1404 of Title 28 of the United States Code.
A. Rule 12(b)(2) Motion to Dismiss
When the issue of personal jurisdiction "is decided initially on the pleadings and without discovery, the plaintiff need only show a prima facie case."*fn12
Plaintiffs "can make this showing through [their] own affidavits and supporting materials containing an averment of the facts that, if credited . . . would suffice to establish jurisdiction over the defendant."*fn13 Thus, a court may consider materials outside the pleadings,*fn14 but must credit plaintiffs' averments of jurisdictional facts as true.*fn15 "[A]ll allegations are construed in the light most favorable to the plaintiff and doubts are resolved in the plaintiff's favor, notwithstanding a controverting presentation by the moving party."*fn16 Nonetheless, where a defendant "rebuts [plaintiffs'] unsupported allegations with direct highly specific, testimonial evidence regarding a fact essential to jurisdiction -- and plaintiffs do not counter that evidence -- the allegation may be deemed refuted."*fn17 Although in patent cases the court applies the uniform body of Federal Circuit law,*fn18 the court will apply the relevant state long-arm statute when determining whether it has personal jurisdiction over a defendant.*fn19 Accordingly, New York law defines the jurisdictional issue here.
1. General Jurisdiction Under Section 301 of the CPLR
Under section 301 of the New York Civil Practice Law and Rules ("CPLR"), New York subjects a foreign corporation to general jurisdiction if it is "doing business" in the State. Under this test, "a foreign corporation is amenable to suit in New York if it is 'engaged in such a continuous course' of 'doing business' here as to warrant a finding of its 'presence' in this jurisdiction."*fn20
"[T]he term 'doing business' is used in reference to foreign corporations to relate to 'the ordinary business which the corporation was organized to do' . . . . It is not the occasional contact or simple collateral activity which is included."*fn21 "The doing business standard is a stringent one because a corporation which is amenable to the [c]court's general ...