Steuben Foods, Inc. v. Oystar USA, Inc.
1:10-cv-00780
W.D.N.Y.May 14, 2013Background
- Plaintiff Steuben Foods, Inc. sues multiple Oystar entities and others for infringement of six patents related to aseptic bottling and packaging.
- Kan-Pak, LLC moves to dismiss under FRCP 12(b)(2), (3), and (6); motion denied in full.
- Plaintiff amended complaints multiple times (Aug 2011, May 2012, Jan 2013) adding Oystar group, GTP, and Kan-Pak.
- Oystar defendants previously had motions to dismiss for lack of personal jurisdiction; denied in 2012.
- Court held Kan-Pak’s registration to do business in New York subjects it to general jurisdiction; venue proper; and Third Amended Complaint states a plausible direct infringement claim under 35 U.S.C. § 271(a); severance and transfer denied.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Kan-Pak is subject to personal jurisdiction | Plaintiff argues registration to do business in NY suffices | Kan-Pak contends registration alone is insufficient | Yes; general jurisdiction exists via registration and contacts. |
| Whether venue is improper for patent action | Venue proper where personal jurisdiction exists | Venue allegedly improper absent proper nexus | Venue proper due to established personal jurisdiction. |
| Whether the Third Amended Complaint states a claim | Complaint satisfies form and Twombly/Iqbal standards | Plaintiff fails to plead elements with specificity | Third Amended Complaint states a plausible direct infringement claim under §271(a). |
| Whether severance and transfer are appropriate | Severance may be warranted to transfer some claims | Severance and transfer would cause duplicative litigation | Denies severance and transfer; jurisdiction and single-forum approach favored. |
Key Cases Cited
- STX Panocean (UK) Co., Ltd. v. Glory Wealth Shipping Pte Ltd., 560 F.3d 127 (2d Cir. 2009) (found that registration can establish general jurisdiction; no attachment needed when defendant subject to jurisdiction via registration)
- Rockefeller Univ. v. Ligand Pharmaceuticals Inc., 581 F. Supp. 2d 461 (S.D.N.Y. 2008) (registration to do business can expose foreign corporations to jurisdiction)
- Augsbury Corp. v. Petrokey Corp., 97 A.D.2d 173 (1st Dep’t 1983) (registration and consent to jurisdiction under NY law)
- In re Bill of Lading Transmission and Processing Sys. Patent Lit., 681 F.3d 1323 (Fed. Cir. 2012) (direct infringement pleading form and Twombly/Iqbal standards addressed)
- Cannon v. Newmar Corp., 210 F. Supp. 2d 461 (S.D.N.Y. 2002) (consent to general jurisdiction through registration; longstanding principle)
- Beja v. Jahangiri, 453 F.2d 959 (2d Cir. 1972) (license to transact business as strong evidence of in personam jurisdiction)