United States District Court, S.D. New York
MEMORANDUM OPINION AND ORDER
GREGORY H. WOODS, United States District Judge
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.
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.
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.
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”).
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
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.
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. The following facts are drawn from the
Court's reading of the exhibits submitted with
Plaintiff's opposition to Defendants' motion.
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.
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.
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. 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.
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.
LEGAL STANDARD FOR MOTION TO DISMISS FOR LACK OF PERSONAL
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)).
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)).
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).
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 “consider whether the . . .
exercise of personal ...