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Multiwave Sensors, Inc. v. Sunsight Instruments, LLC

United States District Court, S.D. New York

April 26, 2017



          GREGORY H. WOODS, United States District Judge


         Defendants Sunsight Holdings, LLC, Sunsight Industries, LLC, and Sunsight Instruments, LLC (collectively, “Sunsight”) bring this motion to dismiss Plaintiff Multiwave Sensors, Inc.'s (“Multiwave”) complaint for lack of personal jurisdiction, or in the alternative, to transfer venue to the U.S. District Court for the Middle District of Florida. Because there is a sufficient allegation that a tortious act of patent infringement occurred in this state, this Court has jurisdiction over one of the defendants, Defendant Sunsight Instruments, and Defendants' motion to dismiss is denied. However, because the relevant witnesses and discovery are located in Florida, because the locus of operative facts is located there, and because there is a related case rapidly proceeding in the Middle District of Florida, Defendants' motion to transfer venue to that district is granted.


         Plaintiff Multiwave is a Canadian company with offices in Ontario, Canada. See Compl., Dkt No. 5, at ¶ 1. Multiwave is a manufacturer of various tools and instruments, including the instrument at issue-an antenna alignment device. As alleged in the complaint, Multiwave owns U.S. Patent No. 8, 436, 779 (the “‘779 Patent”), a patent for an antenna alignment tool that aligns antennas such as those used by cellular telephone providers.

         The Defendants are all Florida companies with offices in Florida. Id. at ¶ 2. Sunsight manufactures and sells various models of an antenna alignment device, known as the Antenna Alignment Tool (“AAT”). Recently, Sunsight has begun to sell new versions of these products, which incorporate a bracket arm used to attach the alignment tool to an antenna. These AATs, the complaint alleges, infringe upon Multiwave's ‘779 patent. Id. at ¶¶ 17-18.

         On February 23, 2016, Multiwave initiated this litigation against Sunsight for patent infringement in violation of 35 U.S.C. § 271 in the Southern District of New York. In May 2016, Sunsight brought litigation against Multiwave in the Middle District of Florida, seeking declaratory judgment of non-infringement of the ‘779 patent, as well as declaratory judgment finding the ‘779 patent to be invalid and unenforceable. See Sunsight Instruments, LLC v. Multiwave Sensors, Inc., 6:16-cv-00818-ORL-31-DAB (M.D. Fla.) (“M.D. Fla. Litig., 16-cv-00818”).

         From May through August 2016, the parties engaged in jurisdictional discovery. On September 2, 2016, Sunsight brought a motion to dismiss for lack of personal jurisdiction, or, in the alternative, to transfer the venue of this case to the Middle District of Florida. For the reasons stated below, Defendants' motion to dismiss is denied, and Defendants' motion to transfer venue is granted.


         In support of their motion, Defendants submitted a declaration from Nicole Icovitti, Operations Manager for all three named Defendants. Decl. of Nicole Icovitti, Dkt. No. 46 (“Icovitti Decl.”), at ¶ 2. Ms. Icovitti explains that two of the Defendants-Sunsight Holdings, LLC and Sunsight Industries, LLC-are both holding companies that do not develop, manufacture, advertise, or sell any product or service. Id. at ¶¶ 14, 18. The declaration further explains that Defendant Sunsight Instruments, LLC does sell and manufacture the accused product, but avers that this Defendant never sold this product in New York. Id. at ¶¶ 24, 27. Plaintiff does not present any evidence demonstrating that Sunsight Industries or Sunlight Holdings sell or manufacture the products at issue in this case, or that the contacts with New York Plaintiff attributes to Defendants generally were made by any Sunsight entity other than Sunsight Instruments.

         Plaintiff submitted two terse affidavits in support of Plaintiff's jurisdictional allegations. One affidavit, from Plaintiff's president, notes that he attended trade shows where distributors sold the alleged infringing AAT products. See Pl.'s Opp'n, Ex. L. The affidavit does not provide any information about the location of those trade shows, but states that one company he has communicated with sells Sunsight's AAT products on their websites, which New York residents can access. Id. at ¶ 9. The second affidavit, from Plaintiff's counsel, states that “jurisdictional discovery has confirmed those suspicions [that infringement was occurring in New York State] with the knowledge that over 200 cellular telephone antennas were infringingly aligned using the finest [sic] accused of infringement in this lawsuit.” Pl.'s Opp'n, Ex. K at ¶ 5. Plaintiff also submitted multiple exhibits to its opposition motion, but did not provide an affidavit describing the exhibits or attesting to their validity.[1] The following facts are drawn from the Court's reading of the exhibits submitted with Plaintiff's opposition to Defendants' motion.

         First, Plaintiff provided an affidavit from an executive of a third-party management services company as evidence supporting personal jurisdiction here. See Pl.'s Opp'n, Ex. B. This executive, whose company is located in New Jersey, states that his company's use of instruments such as Sunsight's AAT-30 “has brought us to New York State to use the Sunsight AAT-30.” Id. at ¶ 4. Additionally, after a problem occurred with one of the Sunsight devices, this company received a replacement device from Sunsight Instruments, which was delivered to the company's offices in New Jersey. Id. at ¶¶ 8-9. The affidavit then contains over twenty-one pages showing when this company used its Sunsight AAT devices to align satellites in New York-perhaps the “over 200 cellular telephone antennas” referred to in Plaintiff's counsel's short affidavit. Id. at ¶¶ 12-15.

         In another affidavit, the chief administrative officer of Talley, Inc., a California company, explains that Talley received ten AAT-30 products from Sunsight Instruments. These AATs were shipped from Sunsight Instruments in Florida to Talley's Olathe, Kansas distribution center. Pl.'s Opp'n Ex. F at ¶¶ 2-3, Ex. B. Talley thereafter sold one of those products to a customer in New York State. Id. at ¶ 5, Ex. C.

         In addition, Plaintiff submitted evidence showing that around April 2016, Andrew Malakoff, Vice President of Sales for Sunsight Instruments, demonstrated one of the alleged infringing products to a potential customer in Rochester, New York. Pl.'s Opp'n, Ex. D (Icovitti Dep. Tr.) at 21-25; Ex. G. Defendant's employee performed this product demonstration together with an independent sales representative from another company, Tera Technologies. Id. Ms. Icovitti subsequently generated a price quote for an interested customer in New York who had attended the demonstration. Icovitti Dep. Tr. at 30-31.[2] Defendants' declaration in support of its motion to dismiss contends, however, that no sale resulted from this demonstration. Icovitti Decl. at ¶ 29. Nothing in Plaintiff's opposition or the exhibits in support of that opposition suggest that such a sale did occur.[3]

         Plaintiff's evidence also highlights a smattering of individual emails that were sent into New York State by a Sunsight entity, for instance an email sent to a customer located in Astoria, New York who had purchased a “classic AAT” device previously. Icovitti Dep. Tr. at 47. Portions of a deposition transcript further indicate that Ms. Icovitti sent a “sales blast email” to someone located in New York, but that she did not know of the customer prior to sending that email. Id. at 35. Finally, the same deposition testimony indicates that another email was sent to a customer in Warwick, New York concerning GPS calibration of a Sunsight product. Id. at 65. There is no context within the excerpted deposition transcript to indicate whether the assistance provided was for one of the allegedly infringing products, and, if so, whether the relevant New Yorker was sold such a product by Sunsight.


         It is well established that, on a motion to dismiss pursuant to Rule 12(b)(2), the “plaintiff bears the burden of demonstrating personal jurisdiction over a person or entity against whom it seeks to bring suit.” Penguin Grp. (USA) Inc. v. Am. Buddha, 609 F.3d 30, 34 (2d Cir. 2010) (citing In re Magnetic Audiotape Antitrust Litig., 334 F.3d 204, 206 (2d Cir. 2003) (per curiam)); see also Bank Brussels Lamberts v. Fiddler Gonzalez & Rodriguez, 171 F.3d 779, 784 (2d Cir. 1999) (“When responding to a Rule 12(b)(2) motion to dismiss for lack of personal jurisdiction, the plaintiff bears the burden of establishing that the court has jurisdiction over the defendant.”) (citations omitted). To defeat a jurisdiction-testing motion, the plaintiff's burden of proof “‘varies depending on the procedural posture of the litigation.'” Dorchester Fin. Sec., Inc. v. Banco BRJ, S.A., 722 F.3d 81, 84 (2d Cir. 2013) (quoting Ball v. Metallurgie Hoboken-Overpelt, S.A., 902 F.2d 194, 197 (2d Cir. 1990)).

         At the pleading stage-and prior to discovery-a plaintiff need only make a prima facie showing that jurisdiction exists. Id. at 84-85; see also Eades v. Kennedy, PC Law Offices, 799 F.3d 161, 167-68 (2d Cir. 2015) (“‘In order to survive a motion to dismiss for lack of personal jurisdiction, a plaintiff must make a prima facie showing that jurisdiction exists.'”) (quoting Licci ex rel. Licci v. Lebanese Canadian Bank, SAL, 732 F.3d 161, 167 (2d Cir. 2013)). “In the instant case, the parties have conducted extensive discovery regarding the defendant's contacts with the forum state, but no evidentiary hearing has been held. Accordingly, ‘plaintiff[s'] prima facie showing, necessary to defeat a jurisdiction testing motion, must include an averment of facts that, if credited by [the ultimate trier of fact], would suffice to establish jurisdiction over the defendant.'” Chloe v. Queen Bee of Beverly Hills, LLC, 616 F.3d 158, 163 (2d Cir. 2010) (quoting Metro. Life Ins. Co. v. Robertson-Ceco Corp., 84 F.3d 560, 567 (2d Cir.1996)).

         Courts may rely on materials outside the pleading in considering a motion to dismiss for lack of personal jurisdiction. See DiStefano v. Carozzi N. Am., Inc., 286 F.3d 81, 84 (2d Cir. 2001). “‘The allegations in the complaint must be taken as true to the extent they are uncontroverted by the defendant's affidavits.'” MacDermid, Inc. v. Deiter, 702 F.3d 725, 727 (2d Cir. 2012) (quoting Seetransport Wiking Trader Schiffarhtsgesellschaft MBH & Co., Kommanditgesellschaft v. Navimpex Centrala Navala, 989 F.2d 572, 580 (2d Cir. 1993)). If the parties present conflicting affidavits, however, “all factual disputes are resolved in the plaintiff's favor, and the plaintiff's prima facie showing is sufficient notwithstanding the contrary presentation by the moving party.” Seetransport Wiking, 989 F.2d at 580 (citations omitted).

         In a case involving a federal question, a district court determines whether it has personal jurisdiction over a non-domiciliary using a two-step inquiry. Licci, 732 F.3d at 168 (citing Best Van Lines, Inc. v. Walker, 490 F.3d 239, 243-44 (2d Cir. 2007)). First, the court “look[s] to the law of the forum state to determine whether personal jurisdiction will lie.” Id. If so, then the court must ‚Äúconsider whether the . . . exercise of personal ...

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