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RegenLab USA LLC v. Estar Techs. Ltd

United States District Court for the Southern District of New York

August 17, 2017, Decided; August 17, 2017, Filed

16-cv-08771 (ALC)

Opinion

OPINION AND ORDER

ANDREW L. CARTER, JR., United States District Judge:

Pending before the Court are partially-briefed motions by Defendant Estar Technologies [*2]  Ltd. ("Estar") to dismiss for lack of personal jurisdiction and by Defendants Eclipse Aesthetics LLC ("Eclipse") and Healeon Medical, Inc. ("Healeon") to dismiss and/or transfer the case on the basis of improper venue. Plaintiff RegenLab USA LLC ("RegenLab") seeks discovery in connection with each of these motions. For the following reasons, the Court finds that some, limited discovery will aid in the pending motions.

BACKGROUND

The Court recites only those facts and procedural history necessary to resolve the motions for jurisdictional and venue discovery.

RegenLab, the United States affiliate of a Swiss manufacturer of medical and pharmaceutical products, brought suit against Estar, an Israeli company; Eclipse, a Texas entity and the sole distributor of Estar products in the United States; and Healeon, a California entity affiliated with Eclipse, alleging infringement of its '957 patent for "[c]ell preparations for extemporaneous use, useful for healing and rejuvenation in vivo," used in platelet rich plasma therapy products. ECF No. 1 ("Compl.").

Estar filed a pre-answer motion to dismiss the Complaint against it for lack of personal jurisdiction. ECF No. 42. With its motion, Estar included the affidavit [*3]  of its Chief Executive Officer, Aron Esteron, who provided testimony regarding certain jurisdictional facts. ECF No. 44 (Affidavit of Aron Esteron ("Esteron Aff.")). He testified that Estar is not registered to do business in New York; has no offices, employees, bank accounts, telephone listings, or other property in the district; has no customers in New York; and maintains only a passive website. Esteron Aff. ¶¶ 8-14, 17-21. Esteron also testified that Estar does not "transact any business" in New York, "regularly conduct or solicit business" there, or derive "any substantial revenue from goods used or consumed or services rendered in New York." Id. ¶¶ 15-16. Esteron denied that Estar sells any products to Healeon. Id. ¶ 36. Esteron did, however, describe the distribution agreement between Estar and Eclipse (the "Distribution Agreement"), which the Court ordered Estar to produce pursuant to a protective order. Id. ¶¶ 23-35; ECF No. 57.

Eclipse and Healeon also moved to dismiss this action, but on the basis of improper venue under the patent venue statute, 28 U.S.C. § 1400(b), or, alternatively, to transfer this action to the Northern District of Texas for convenience under 28 U.S.C. § 1404(a). ECF Nos. 45 (Eclipse Motion), [*4]  47 (Healeon Motion). With respect to the propriety of venue in this district—the relevant argument for present purposes—each asserted that it does not have a "regular and established place of business" in this district. Like Estar, Eclipse and Healeon also submitted affidavits from their principals: Thomas O'Brien, the Chief Executive Officer of Eclipse, and John Panik, the Chief Operating Officer of Healeon. ECF Nos. 49-3 (Declaration of Thomas O'Brien ("O'Brien Decl.")), 50-3 (Declaration of John Panik ("Panik Decl.")). O'Brien testified that, while Eclipse is registered to do business in New York and maintains a registered agent here, it has no bank accounts, does not own or rent real property, have a telephone number or directory listing, and has no messaging or secretarial service in New York. O'Brien Decl. ¶¶ 7-12. Eclipse has two employees in New York who solicit sales of Eclipse's products; however, these employees do not maintain any inventory, and bills and sales are processed through Eclipse's office in Texas. Id. ¶¶ 13-15. Panik's testimony shows that Healeon has less of a connection to New York than Eclipse. In addition to not having any bank accounts, rented or owned [*5]  real property, telephone numbers or directory listings, or messaging and secretarial services in New York, Healeon also is not registered to do business in New York and has no employees here. Panik Decl. ¶¶ 6-14.

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2017 U.S. Dist. LEXIS 131627 *; 2017 WL 3535008

REGENLAB USA LLC, Plaintiff, -against- ESTAR TECHNOLOGIES LTD., ECLIPSE AESTHETICS LLC, and HEALEON MEDICAL, INC., Defendants.

Subsequent History: Motion denied by RegenLab USA LLC v. Estar Techs. Ltd., 2017 U.S. Dist. LEXIS 131495 (S.D.N.Y., Aug. 17, 2017)

Dismissed by, in part, Motion denied by, in part, Reserved by, in part, Motion granted by RegenLab USA, LLC v. Estar Techs. Ltd., 2018 U.S. Dist. LEXIS 138065 (S.D.N.Y., Aug. 15, 2018)

Dismissed by RegenLab USA, LLC v. Estar Techs. Ltd., 2018 U.S. Dist. LEXIS 166714 (S.D.N.Y., Sept. 27, 2018)

CORE TERMS

discovery, venue, personal jurisdiction, distribution agreement, products, substantial revenue, parties, sales, established place of business, motion to dismiss, regular, do business, manufacturer, registered, employees, consumed, customer, courts, improper venue, bank account, infringement, allegations, solicits, motions, prong