NY Patent Decisions Blog

Lights Out: Judge Carter Grants Motion to Dismiss For Improper Venue

On September 30, 2019—more than two years after Plaintiff, Electric Mirror, LLC (“Electric Mirror”) first brought suit for patent infringement in the Southern District of New York—United States District Judge Andrew L. Carter granted Defendants Project Light, LLC, Project Light, Inc., Prospetto Light, LLC, and Prospetto Lighting, LLC’s (collectively, “Project Light”) motion to dismiss for improper venue.

The case had been stayed for more than a year pending the outcome of a related proceeding before the United States International Traded Commission (“ITC”). Once the ITC-related stay was lifted, Defendants filed a motion to dismiss pursuant to 28 U.S.C. § 1406(a) for, inter alia, improper venue. Plaintiff challenged the timeliness of that motion, as well as the merits.

Timeliness

According to Plaintiff, Project Light’s motion came too late in the day. The Court, however, disagreed.

First, the Court rejected Plaintiff’s argument that Defendants had waived any venue challenge by failing to raise the objection prior to filing their motion to stay. Given that Defendants had not yet filed a responsive pleading or Rule 12(b) motion, the bars imposed by Rule 12(g)(2) and (h)(1)—prohibiting a venue defense not raised in a Rule 12 motion or responsive pleading—did not apply.

Secondly, Defendants had not waived venue by delaying the filing of certain motions, including the instant motion. According to the Court’s calculations, “[e]xcluding the period during which the stay was in effect, there were approximately three months between the date when the venue defense became available and the date when Defendants asserted their venue defense.” And three months, according to the Court, does not waiver make.  Defendants had also “made clear” their intentions to bring a venue challenge in a March 2018 Joint Status Report and in Defendants’ September 2018 motion to lift the ITC-related stay.

Proper Venue

The Court then turned to the appropriateness of venue in the Southern District of New York. As many are familiar, patent infringement actions “may be brought [1] in the judicial district where the defendant resides, or [2] where the defendant has committed acts of infringement and has a regular and established place of business.” 28 U.S.C. § 1400(b). For purposes of the first prong, a corporate defendant’s “residence” equates to where the entity is incorporated. TC Heartland, LLC v. Kraft Food Group Brands,137 S. Ct. 1514, 1518 (2017).

Here, it was undisputed that none of the Defendants were incorporated in New York. As to the second prong, while Electric Mirror alleged that Defendants had infringed its patent by advertising products practicing the patents in suit in the Southern District of New York, they had failed to demonstrate that Project Light had a “regular and established place of business” in the district. 

The court granted the motion to dismiss for improper venue, effectively putting the lights out on this matter.

The case is Electric Mirror, LLC v. Project Light, LLC, 17-CV-61747, Dkt. No. 54 (S.D.N.Y. Sept. 30, 2019).