United States District Court, N.D. New York
For Plaintiff: RICHARD E. PARKE, ESQ., RONALD R. SANTUCCI, ESQ., OF COUNSEL, FROMMER LAWRENCE & HAUG LLP, New York, New York.
For Defendants: DAVID P. MIRANDA, ESQ., CAROLINE B. AHN, ESQ., OF COUNSEL, HESLIN ROTHENBERG FARLEY & MESITI P.C, Albany, NY.
For Defendants: JAMES E. HOPENFELD, ESQ., OF COUNSEL, HOPENFELD SINGER RICE & SAITO LLP, Washington, DC.
MEMORANDUM-DECISION and ORDER
David N. Hurd, United States District Judge.
This action arises out of a dispute between Albany International Corporation (" Albany" ) and Yamauchi Corporation (" Yamauchi" ) over the validity of four U.S. patents that protect various design aspects of " shoe press belts," which are used to remove excess water during the paper manufacturing process. Albany filed the instant action alleging that Yamauchi and its U.S. sales representative, AstenJohnson, Inc. (" AstenJohnson" ), are manufacturing and selling products that infringe two of its patents (the " Albany Patents" ). It also seeks a declaration that the two patents Yamauchi holds on similar technology are invalid and unenforceable (the " Yamauchi Patents" ).
Yamauchi and AstenJohnson (collectively " defendants" ) have filed this joint motion to dismiss or transfer pursuant to Federal Rules of Civil Procedure 12(b)(2) and (3) (" Rule " ), 28 U.S.C. § 1404(a), and Local Rule 7.1. They argue that there
is no personal jurisdiction over either defendant, and that venue is improperly laid against AstenJohnson. Alternatively, defendants seek to transfer this case to the District of South Carolina. Plaintiff opposes, and in the alternative requests leave to conduct jurisdictional discovery. Oral argument was heard on Friday, October 11, 2012 in Utica, New York. Decision was reserved.
II. FACTUAL BACKGROUND
Albany is a Delaware corporation based in Rochester, New Hampshire. Compl. ¶ 1. It manufactures a number of products, including shoe press belts. Id. ¶ 14. Prior to 2011, Albany's corporate headquarters were located just outside of Albany, New York. Moriarty Decl., ECF No. 19-1, ¶ 6. Although the majority of its operations have been relocated to the United Kingdom, Sweden, and China, Albany still operates two locations in New York that employ approximately 310 people. Id. ¶ 7.
Yamauchi is a Japanese corporation based in Osaka, Japan. Compl. ¶ 2. It manufactures a number of industrial products, including the allegedly infringing Yamabelt Super95 Interrupted Groove shoe press belt (" Yamabelt" ). See id. ¶ 5. Although it has a U.S. sales office located in Schaumburg, Illinois, Yamauchi has no offices or facilities in New York and is not authorized to do business in the State. Nakagawa Decl., ECF No. 15-15, ¶ 4. It has never sold a Yamabelt in New York. Id. ¶ ¶ 8-9; see Compl. ¶ 15. Yamauchi maintains a globally accessible website that provides information about its various products, but a direct purchase cannot be made from the website. Compl. ¶ 16. Rather, sales inquiries in the " Americas" are directed to Luc Foisy, an AstenJohnson employee located at a facility in Kanata, Ontario, Canada. See id. ¶ 17; Pl.'s Mem. Opp'n, ECF No. 19, 5 (" Pl.'s Mem." ).
AstenJohnson is a Delaware corporation based in Charleston, South Carolina. Compl. ¶ 3. It manufactures and sells products for the papermaking industry, but does not make or use shoe press belts. See id. ¶ 7; Pl.'s Mem. 6. It is authorized to do business in New York. Compl. ¶ 7. However, it does not maintain an office or bank account, own property, or otherwise have a corporate presence in the state, and " substantially less" than one percent of the total sales of its various products take place in the Northern District of New York. Kemp Decl., ECF No. 15-16, ¶ ¶ 5-6. Since May 2009, AstenJohnson has promoted the sale of Yamauchi's shoe press belts on behalf of Yamauchi's U.S. subsidiary. Compl. ¶ 17. However, AstenJohnson does not have the authority to make sales--inquiries are referred to Yamauchi's U.S. subsidiary in Illinois. See id.; Kemp Decl. ¶ 4. AstenJohnson also has a globally accessible website, but no products are offered for sale, and the website does not mention the Yamabelt or the company's affiliation with Yamauchi. Id. ¶ 8.
B. Procedural history
In late December 2012, Albany and Yamauchi, acting through their respective counsel, began a heated exchange of letters over the validity of the U.S. patents that are now the subject of this action. Parke Decl., ECF No. 19-2, ¶ ¶ 3-5. On March 6, 2013, Yamauchi sued Albany in the Central District of California (the " California action" ), alleging that Albany was
infringing on the Yamauchi Patents and seeking a declaration that the Albany Patents were invalid or unenforceable. Id. ¶ 6. The very next day, Albany sued Yamauchi in the Northern District of New York (the " New York action" ) alleging the inverse. Id. ¶ 7.
On July 22, 2013, Albany filed a motion before the court in the California action to transfer the case to the Northern District of New York. Id. ¶ 7. Due to a " calendaring error," Yamauchi failed to file a brief in opposition and the court presiding over the California action granted Albany's motion to transfer as unopposed. Id.; Defs.' Mem. Supp. Mot. Dismiss, ECF No. 15-1, 7 (" Defs.' Mem." ). The next day, Yamauchi filed an emergency motion requesting that the California court vacate its transfer order and consider Albany's transfer motion on the merits. Parke Decl. ¶ 8. The California court denied Yamauchi's emergency motion, ...