. ,. ~ .

- Case 4:19-cv-00309-JEG-RAW Document 23 Filed 09/26/19 Page 1 of 3

·t' '

FILED
IN CLERK'S OFFICE
UNITED STATES DISTRICT COURT
US DISTRICT COURT E.D.N.Y.
EASTERN DISTRICT OF NEW YORK
----------------------------------------------------------x * SEP 2 6 2019
AURORA LED TECHNOLOGY, INC. and
SHENZHEN AURORA TECHNOLOGY
*
BROOKLYN OFFICE
CO., LTD.,
Plaintiffs,
v. TRANSFER ORDER
18-CV-1866 (WFK)
PUTCO, INC.,
Defendant.
----------------------------------------------------------x
WILLIAM F. KUNTZ II, United States District Judge:

Before this Court is Defendant Putco's motion to dismiss Plaintiffs' Complaint pursuant

to Rule 12(b)(6) of the Federal Rules of Civil Procedure or, in the alternative, transfer the

Complaint to the Southern District oflowa pursuant to 28 U.S.C. §§ 1404(a), 1406(a). See Def.

Mot. to Dismiss, ECF No. 20; Def. Mem. in Support ("Def. Mem."), ECF No. 20-2.

In Count Four of the Complaint, Plaintiffs allege patent infringement of their U.S. Patent

No. US D808,049S (the "'049 Patent"), entitled "LED Car Light." See Compl. ,1 10, 37-43,

ECF No. 1. For the reasons discussed, the Court concludes the Eastern District of New York is

not the proper venue for this count, and it must be transferred to the Southern District of Iowa.

28 U.S.C. § 1406(a).

"Any civil action for patent infringement may be brought in the judicial district wh~re the

defendant resides, or where the defendant has committed acts of infringement and has a regular

and established place of business." 28 U.S.C. § 1400(b) (emphasis added). 1 "[C]ourts should be

mindful that patent venue is narrower than general venue-and intentionally so." RegenLab

USA LLC v. EStar Techs. Ltd., 335 F. Supp. 3d 526, 548 (S.D.N.Y. 2018) (Carter, J.). For

1
Plaintiffs do not reference 28 U.S.C. § 1400(b) in their Complaint but instead cite 28 U.S.C. §§
139l(b}-{c) to reason venue in the Eastern District ofNew York is proper. See Compl. 18.

1
 Case 4:19-cv-00309-JEG-RAW Document 23 Filed 09/26/19 Page 2 of 3

purposes of this patent venue statute, "a domestic corporation 'resides' only in its State of

incorporation." TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 137 S. Ct. 1514, 1517

(2017). To have a regular and established place of business within a district: "(l) there must be a

physical place in the district; (2) it must be a regular and established place of business; and (3) it

must be the place of the defendant." In re Cray Inc., 871 F.3d 1355, 1360 (Fed. Cir. 2017). See

generally Tour Technology Software, Inc. v. RTV, Inc., 377 F. Supp. 3d 195, 202-10 (E.D.N.Y.

2019) (Brodie, J.) (citing In re Cray and concluding "regular and established place of busin~ss"
I

requirement in § 1400(b) was not satisfied).

Plaintiffs concede since Defendant is incorporated in Iowa, the Eastern District ofNrw

York is not the proper venue under the first prong of 28 U.S.C. § 1400(b). See Pls.' Opp. to Def.

Mot. to Dismiss at 7-8, ECF No. 19. However, Plaintiffs contend "jurisdictional discovery is

required to determine whether Putco 'has a regular and established place of business."' Id. at 8.

The Court disagrees. Plaintiffs point to outdated case law, see In re Cordis Corp., 769 F.2d 733,

737 (Fed. Cir. 1985), to suggest a "regular and established place of business" is all that is

required. Instead, there must be a "physical, geographical location in the district from whicl) the

business of the defendant is carried out"-and no such location exists in this case. In re Cray,

Inc., 871 F.3d at 1362. Accordingly, Count Four must be transferred to the Southern District of

Iowa. See 28 U.S.C. § 1406(a) (authorizing district courts to transfer a case to any district in

which it could have been brought in the interest of justice when the plaintiff filed the case in the

wrong venue).

In the broad discretion of the Court in determining notions of convenience and fairn~ss

under 28 U.S.C. § 1404(a), see D.H Blair & Co., Inc. v. Gottdiener, 462 F.3d 95, 106 (2d Cir.
I

2
;;
; Case 4:19-cv-00309-JEG-RAW Document 23 Filed 09/26/19 Page 3 of 3

2006), the Court transfers the remaining claims in the Complaint to the Southern District of Iowa

pursuant to 28 U.S.C. § 1404(a).

Accordingly, the Court hereby GRANTS in part Defendant's motion (ECF No. 20) and

transfers the Complaint in its entirety to the Southern District of Iowa pursuant to 28 U.S.C. §§

1404(a), 1406(a).

s/WFK

Dated: September 26, 2019

Brooklyn, New York