Mayborn Limited v. Comotomo Inc.

Background

Mayborn (UK) Limited, Mayborn USA, Inc., and Mayborn Group Limited sued Comotomo Inc. and Comotomo Corporation for direct and induced infringement of two patents concerning baby bottles with flexible, breast-like nipple regions. Comotomo moved under Federal Rule of Civil Procedure 12(b)(3) to dismiss for improper venue or, alternatively, to transfer the case to the Northern District of California. Mayborn also requested permission to conduct discovery concerning venue.

Venue Analysis

Patent-infringement venue for a domestic defendant is governed by 28 U.S.C. § 1400(b). The statute permits suit where the defendant resides or where it committed acts of infringement and has a regular and established place of business. The court explained that a regular and established place of business requires a physical place in the district, a regular and established business there, and a place that belongs to the defendant.

The parties agreed that Comotomo Inc. resides, for patent-venue purposes, in California and that infringing acts had been properly alleged in the Southern District of New York. The remaining issue was whether Comotomo Inc. had a regular and established place of business in that district. The court did not decide whether venue should be assessed as of the complaint’s filing date or as of the date the infringement claim accrued, because venue was improper under either approach.

Comotomo Inc.’s last undisputed New York office closed in March 2018. The court found that this was nearly four years before the complaint was filed and more than three years before the infringement claim could have accrued. A website page listing the former New York address did not establish a physical, regular, and established place of business during the relevant period. Nor did the allegations about employee Jeff Simsiman’s work from New York establish that Comotomo controlled his residence, stored inventory there, represented it as a company location, or otherwise operated a regular and established business there. The court also stated that the allegations concerning Vice President Tony Lee did not support New York venue because he worked from an apartment in Queens, which is in the Eastern District of New York.

Venue-Related Discovery

The court denied Mayborn’s request for venue-related discovery. It concluded that Mayborn had not provided fact-specific allegations or evidence supporting a finding that venue was proper and had not supported any of the applicable requirements for a regular and established place of business.

Disposition

The court concluded that venue was not proper in the Southern District of New York. Under 28 U.S.C. § 1406(a), the court could dismiss the case or transfer it in the interest of justice. It declined to dismiss because it had no view at that stage that the case was meritless. Because the parties agreed that the case could have been brought in the Northern District of California, where Comotomo Inc. is headquartered, the court granted Comotomo’s motion to transfer. The Clerk was directed to terminate the motion, close the New York case, and transfer the action to the Northern District of California. Judge Paul G. Gardephe signed the order.