Pecorino v. Vutec Corp.
934 F. Supp. 2d 422
E.D.N.Y2012Background
- Pecorino and Medaglia, New York residents, are inventors and co-owners of the '765 Patent; Visionart is the exclusive licensee.
- The '765 Patent, issued Nov. 23, 1993, covers a video display screen cover; Visionart license governs commercialization.
- Farralane Lighting Audio and Video Systems Inc. (Farralane) is a New York company; Vutec Corporation (Vutec) is a Florida company selling ArtScreen products.
- Plaintiffs allege Farralane distributed infringing covers in this District, and Vutec manufactured/distributed infringing screens; plaintiffs allege awareness of the '765 Patent.
- Defendants moved to transfer venue to the Southern District of Florida and/or dismiss for failure to state a claim; the court denied transfer and granted in part and denied in part the motion to dismiss.
- Court considered both venue-transfer factors and pleading sufficiency under Twombly/Iqbal, addressing sham/shadow defendant issues and locus of operative facts.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Florida is a proper transferee venue | Venue could have been proper in Florida for Vutec and Farralane. | Transfer appropriate due to Florida connections and witnesses. | denying transfer; not met for transfer |
| Whether Farralane is a sham/shadow defendant for §1404(a) purposes | Farralane is a real defendant with potential jurisdiction and witnesses. | Farralane is a sham to secure venue; subject to Florida jurisdiction. | Farralane not treated as sham; transfer analysis proceeds with all defendants considered |
| Whether plaintiffs stated a claim for induced infringement | Alleges Vutec knowingly induced infringement with knowledge of the patent. | Pleading lacks facts showing specific intent to induce infringement. | Induced infringement claim dismissed |
| Whether plaintiffs stated a claim for contributory infringement | Screens sold by Farralane in combination with televisions may be a component. | No substantial noninfringing use and no identified component; insufficient facts. | Contributory infringement claim dismissed |
| Whether willful infringement was properly pled | Alleges direct infringement and knowledge of the patent; supports willfulness. | Willfulness requires more; pleading sufficiency unclear. | Willful infringement claim survives dismissal |
Key Cases Cited
- Filmline (Cross-C-C) Prods., Inc. v. United Artists Corp., 865 F.2d 513 (2d Cir.1989) (two-step §1404(a) transfer inquiry; convenience and justice considerations)
- Hoffman v. Blaski, 363 U.S. 335 (1960) (threshold inquiry: district where action might have been brought at filing time)
- In re Genentech, Inc., 566 F.3d 1338 (Fed.Cir.2009) (locus of operative facts and evidence location in patent cases)
- In re Bill of Lading Transmission and Processing Sys. Patent Litig., 681 F.3d 1323 (Fed.Cir.2012) (indirect infringement pleading standard; knowledge and intent considerations)