On October 30, 2023, Judge Brian M. Cogan (E.D.N.Y) transferred a declaratory judgement patent dispute from the Eastern District of New York to the Central District of California under 28 U.S.C. § 1406, on the basis of improper venue. See Shenzhen City Sanhu Tech. Co., Ltd. v. Albanese et. al., No. 23-cv-7691 (BMC), 2023 BL 389932 (E.D.N.Y. Oct. 30, 2023).

The underlying dispute involves two companies that sell competing products on Amazon. The declaratory judgment defendants requested that Amazon pull the plaintiff’s products off the site, arguing that the plaintiff infringed one of the defendant’s patents. Amazon complied, but then reinstated the plaintiff’s products after the plaintiff produced an analysis showing the product did not infringe. The defendants again petitioned Amazon to remove the plaintiff’s products. Concerned that the cycle of removing and reinstating its products would continue indefinitely, plaintiff requested a declaratory judgment that it did not infringe the defendant’s patent.

Judge Cogan declined to rule on plaintiff’s declaratory judgment motion because he found that the plaintiff had not shown venue was proper in the Eastern District of New York. Judge Cogan found that under 28 U.S.C. § 1391, which governs venue in a declaratory judgment action for patent infringement, the plaintiff needed to show that “both defendants reside in New York,” or that New York was a location of “those events or omissions giving rise to the claim.” Op. at 2 (citing 28 U.S.C. § 1391(b)(1); 28 U.S.C. § 1391(b)(2); Eddie Kane Steel Prods., Inc v. Ala. Plate Cutting Co., 2019 WL 3281623, at *3 (D.N.J. July 19, 2019)). Judge Cogan also noted that venue may be proper where the defendant has repeatedly directed communications relating to the infringement, id. (citing Trimble Inc. v. PerDiemCo LLC, 997 F.3d 1147 (Fed. Cir. 2021), or where the plaintiff’s business is substantially directed. Id. He found that, in this case, “there is no suggestion that defendants directed their infringement allegations to or from the Eastern District of New York, does not reside in the district, and plaintiff does not even allege that a substantial portion of its business takes place here.” Id. at 2-3. Thus, the Court found venue was improper, and transferred the action to the Central District of California, where the defendants are located.