Jetblue Airways Corp. v. Helferich Patent Licensing, LLC
2013 U.S. Dist. LEXIS 28439
E.D.N.Y2013Background
- Helferich Patent Licensing, LLC enforces its patent portfolio and engages in licensing and enforcement activity nationwide.
- Helferich, with New York contacts, sent license-or-litigation notices to JetBlue in New York and engaged in related communications.
- JetBlue filed a declaratory judgment action in the Eastern District of New York seeking noninfringement and invalidity in November 2012.
- Helferich sought dismissal for lack of personal jurisdiction or transfer to the Northern District of Illinois; the court granted transfer as a matter of justice and convenience.
- A sealing order previously granted for Helferich’s records was revoked to reveal its New York contacts, which the court found relevant to jurisdiction.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether New York exercises personal jurisdiction over Helferich | JetBlue asserts Helferich conducts substantial NY business via licensing and contacts. | Helferich lacks permanent NY presence; minimal contacts suffice for early-stage patent actions only. | Yes; New York general jurisdiction applies due to long-term, systematic NY-based licensing activity. |
| Whether the case should be transferred to the Northern District of Illinois under 1404(a) | JetBlue argues NY forum is proper and convenient; transfer would prejudice efficiency. | Illinois is where related cases are pending; transfer would promote judicial economy. | Transfer to Illinois granted; courts may consolidate related patent actions for efficiency. |
Key Cases Cited
- Burger King Corp. v. Rudzewicz, 471 U.S. 462 (1985) (purposeful availment and minimum contacts required for due process)
- Asahi Metal Industry Co. v. Superior Court, 480 U.S. 102 (1987) (stream-of-commerce alone not sufficient for general jurisdiction; additional conduct needed)
- Red Wing Shoe Co. v. Hockersonr-Halberstadt Inc., 148 F.3d 1355 (Fed. Cir. 1998) (distinguishes license offers vs. arms-length licensing; general jurisdiction when long-term relationship)
- Inamed Corp. v. Kuzmak, 249 F.3d 1356 (Fed. Cir. 2001) (jurisdiction supported by cease-and-desist letter and licensing activity in forum)
- Akro Corp. v. Luker, 45 F.3d 1541 (Fed. Cir. 1995) (exclusive license creates continuing obligations and contacts with forum)
- Avocent Huntsville Corp. v. Aten Int’l Co., Ltd., 552 F.3d 1324 (Fed. Cir. 2008) (analyzed general vs. specific jurisdiction in patent context)
- Deutsche Bank Sec., Inc. v. Montana Bd. of Investments, 7 N.Y.3d 65 (2006) (business contacts and substantial NY activity can support NY jurisdiction)
- Hoffritz for Cutlery, Inc. v. Amajac, Ltd., 763 F.2d 55 (2d Cir. 1985) (standard for personal jurisdiction when no in-forum presence is necessary)
- Landoil Resources Corp. v. Alexander & Alexander Servs., Inc., 918 F.2d 1039 (2d Cir. 1990) (factors for evaluating doing business in forum state)
- Talbot v. Johnson Newspaper Corp., 71 N.Y.2d 827 (1988) (NY due process boundaries for jurisdiction)
- City of New York v. Mickalis Pawn Shop, LLC, 645 F.3d 114 (2d Cir. 2011) (concurring views on jurisdiction and multi-jurisdictional considerations)