You Don’t Belong Here – Judge Ramos Grants Defendants’ Motion to Dismiss for Lack of Personal Jurisdiction and Improper Venue
On September 28, 2021, United States District Judge Edgardo Ramos (S.D.N.Y.) granted Defendant JLC Tech LLC’s (“JLC”) motion to dismiss for lack of personal jurisdiction and improper venue. Judge Ramos also denied Plaintiff Shenzen OKT Lighting Co., Ltd.’s (“OKT”) motion to file a second amended complaint.
JLC owns U.S. Patent No. 8,177,385 (“the ’385 patent”) based on its T-Bar lighting fixture. The ’385 patent is in the same family as U.S. Patent No. 10,508,805 (“the ’805 patent”), which was at issue in this litigation. JLC is a limited liability company organized under Massachusetts law with a principal place of business in Massachusetts. JLC has business relationships regarding sales of its T-Bar lighting fixture with two companies in New York State, including one in New York City. OKT is a Chinese company with a principal place of business in Shenzhen, China. OKT has customers in the Eastern District of New York, but not the Southern District of New York. Both parties participated in lighting industry trade shows in New York.
In January 2020, JLC sent a cease-and-desist letter to OKT’s customer in New York, alleging the customer infringed the ’805 patent. In May 2020, JLC sued another customer of OKT, alleging infringement of the ’805 patent. OKT filed this action for declaratory judgment of patent noninfringement, patent invalidity, and patent unenforceability based on JLC’s “threats of litigation to enforce the ’805 patent,” including its ability to sell T-Grid lighting fixture.
The Court ruled that it did not have personal jurisdiction over JLC in the district. The Court agreed with JLC that its contacts in New York are “simply too minimal” to support general personal jurisdiction in the district. Specifically, the Court found that “JLC does not own any property in New York, does not maintain any offices in New York, has no members in New York, and does not employ any New York residents” and what contacts it did have were not “continuous and systematic.”
The Court also determined that JLC’s activities in the forum were insufficient to subject JLC to specific personal jurisdiction. For a claim of specific personal jurisdiction, the defendant must have transacted “any business” within the state and the asserted claim must arise from that business activity. While the Court agreed that JLC attended industry shows and sold products, the Court found that OKT did not sufficiently plead “that its action for declaratory judgment arises from JLC’s contacts in New York.” “Courts in this Circuit have repeatedly held that sending a cease and desist letter is insufficient to involve jurisdiction.” The Court noted that if there were other activities beyond a cease-and-desist letter that “relate to enforcement of patents in the forum state,” that may be sufficient to establish personal jurisdiction in the forum. However, no such activities were pleaded here. The Court also found that since the Court does not have personal jurisdiction over JLC in the district, venue is improper.
The case is Shenzhen OKT Lighting Co., Ltd., v. JLC Tech LLC, 20-cv-5062 (ER) (Sept. 28, 2021)