Case 1:19-cv-07529-DLC Document 17 Filed 10/03/19 Page 1 of 9
`
`
`BOT M8 LLC,
`
`
`v.
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF NEW YORK
`
`
`
`
`Plaintiff,
`
`
`
`Civil Action No. 1:19-cv-07529-DLC
`
`
`
`SONY CORPORATION OF AMERICA,
`SONY CORPORATION, and SONY
`INTERACTIVE ENTERTAINMENT
`AMERICA LLC,
`
`
`Defendants.
`
`
`
`SONY INTERACTIVE ENTERTAINMENT LLC’S MEMORANDUM OF LAW IN
`SUPPORT OF MOTION TO TRANSFER DUE TO IMPROPER VENUE
`
`
`
`
`
`
`
`

`

`
`
`I.
`
`II.
`
`Case 1:19-cv-07529-DLC Document 17 Filed 10/03/19 Page 2 of 9
`
`TABLE OF CONTENTS
`
`Page
`
`INTRODUCTION............................................................................................................. 1
`
`FACTUAL BACKGROUND ........................................................................................... 2
`
`A.
`
`B.
`
`C.
`
`Defendant Sony Interactive Entertainment LLC .................................................... 2
`
`Plaintiff Bot M8 LLC.............................................................................................. 2
`
`Bot’s Complaint Against SIE.................................................................................. 2
`
`III. ARGUMENT ..................................................................................................................... 3
`
`A.
`
`B.
`
`Venue Is Not Proper in This District for Bot’s Patent Case Against SIE. .............. 3
`
`Bot’s Complaint Against SIE Should Be Transferred to the Northern
`District of California. .............................................................................................. 5
`
`IV. CONCLUSION ................................................................................................................. 6
`
`
`
`
`
`
`

`

`Case 1:19-cv-07529-DLC Document 17 Filed 10/03/19 Page 3 of 9
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`
`
`Cases
`
`In re Cray Inc.,
`871 F.3d 1355 (Fed. Cir. 2017)..................................................................................................3
`
`Davidson v. Chung Shuk Lee,
`No. 17 CV 9820 (VB), 2018 WL 6047830 (S.D.N.Y. Nov. 19, 2018) .....................................4
`
`Peerless Network, Inc. v. Blitz Telecom Consulting, LLC,
`No. 17-CV-1725 (JPO), 2018 WL 1478047 (S.D.N.Y. Mar. 26, 2018) ....................................5
`
`Post Consumer Brands, LLC v. Gen. Mills, Inc.,
`No. 17-CV-2471 SNLJ, 2017 WL 4865936 (E.D. Mo. Oct. 27, 2017) .....................................5
`
`Seitz v. Bd. of Trustees of the Pension Plan of the New York State Teamsters
`Conference Pension & Ret. Fund,
`953 F. Supp. 100 (S.D.N.Y. 1997).............................................................................................5
`
`TC Heartland LLC v. Kraft Foods Grp. Brands LLC,
`137 S. Ct. 1514 (2017) ...........................................................................................................3, 4
`
`In re: ZTE (USA) Inc.,
`890 F.3d 1008 (Fed. Cir. 2018)..................................................................................................3
`
`Statutes
`
`28 U.S.C. § 1400(b) .........................................................................................................................3
`
`
`
`

`

`Case 1:19-cv-07529-DLC Document 17 Filed 10/03/19 Page 4 of 9
`
`
`
`I.
`
`INTRODUCTION
`
`This case involves patent infringement assertions by plaintiff Bot M8 LLC (“Bot”)
`
`against certain PlayStation® video game products and services of defendant Sony Interactive
`
`Entertainment LLC (“SIE”). SIE is a California limited liability company headquartered in San
`
`Mateo, California, and does not have any regular and established place of business in the
`
`Southern District of New York (“this District”). Venue for SIE is thus not proper in this District.
`
`Accordingly, SIE moves under Federal Rule 12(b)(3) as well as 28 U.S.C. §§ 1400(b) and
`
`1406(a) to transfer Bot’s case against SIE due to improper venue.1
`
`Under Supreme Court and Federal Circuit precedent, venue for patent cases against a
`
`domestic company is proper under 28 U.S.C. § 1400(b) only in a district where the defendant: i)
`
`“resides” by virtue of incorporation in that state, or ii) “has a regular and established place of
`
`business” in a physical place of the defendant. These requirements are not satisfied here.
`
`SIE is a California limited liability company with its headquarters located in San Mateo,
`
`California. SIE does not have any office or facility in this District, let alone a regular and
`
`established place of business. Venue in this District is therefore improper under Section 1400(b).
`
`In cases where venue is found to be improper, the Court has discretion under 28 U.S.C. §
`
`1406(a) to either dismiss or to transfer to another forum. Given that both SIE and Bot have their
`
`headquarters in the Northern District of California—and since numerous potential witnesses and
`
`documents are located there—SIE respectfully requests that the Court transfer Bot’s patent
`
`infringement claims against SIE to the Northern District of California.
`
`
`1 Bot’s Complaint also names Sony Corporation and Sony Corporation of America as defendants. These entities
`do not challenge venue at this time. However, SIE is the true party in interest with regard to Bot’s accusations
`against PlayStation® products. If this motion is granted, the claims against the Sony Corporation entities
`should be resolved either by dismissal or by transfer to the forum that handles Bot’s accusations against SIE—
`preferably via agreement of the parties, or if needed, through further motion practice.
`
`
`
`1
`
`

`

`Case 1:19-cv-07529-DLC Document 17 Filed 10/03/19 Page 5 of 9
`
`
`
`II.
`
`FACTUAL BACKGROUND
`A.
`
`
`
`Defendant Sony Interactive Entertainment LLC
`
`SIE is a California limited liability company with its principal place of business in San
`
`Mateo, California. (Ex. 1, Anderson Dec. ¶ 4).2 SIE is responsible for PlayStation® products
`
`and services in the U.S. and globally. SIE conducts research and development, marketing, sales,
`
`and other business functions relating to PlayStation® products at its headquarters and other
`
`facilities in the Northern District of California. (Id. ¶ 6). SIE does not have any office or facility
`
`in this District, nor anywhere in the State of New York. (Id. ¶ 7).
`
`SIE is a separate entity from defendants Sony Corporation and Sony Corporation of
`
`America. SIE is the exclusive importer into and the exclusive distributor in the United States of
`
`PlayStation® products.
`
`B.
`
`Plaintiff Bot M8 LLC
`
`Plaintiff Bot is a Delaware company, which has listed its address in San Mateo,
`
`California, in a public filing with the Patent Office. (Ex. 2). Bot was formed several months
`
`before receiving an assignment of the patents asserted in this case and does not appear to have
`
`any business operations aside from engaging in patent infringement assertions.
`
`C.
`
`Bot’s Complaint Against SIE
`
`On August 12, 2019, Bot filed its Complaint in this District against SIE and two other
`
`Sony entities. (Dkt. 1). The Complaint acknowledges that SIE is located in San Mateo,
`
`California. (Id. ¶ 4). With regard to venue, the Complaint offers a conclusory assertion that
`
`“[v]enue is proper in this Court pursuant to 28 U.S.C. §§ 1391(b) and (c) and 1400(b).” (Id. ¶ 7).
`
`
`2 Exhibit citations refer to exhibits to the Declaration of Gregory S. Arovas filed concurrently with this motion.
`
`
`
`2
`
`

`

`Case 1:19-cv-07529-DLC Document 17 Filed 10/03/19 Page 6 of 9
`
`
`
`Because that assertion is incorrect, and because Bot cannot meet its burden of establishing venue
`
`in this District, SIE brings the present motion.
`
`III. ARGUMENT
`A.
`
`Venue Is Not Proper in This District for Bot’s Patent Case Against SIE.
`
`Under Section 1400(b), “[a]ny civil action for patent infringement may be brought in the
`
`judicial district where the defendant resides, or where the defendant has committed acts of
`
`infringement and has a regular and established place of business.” 28 U.S.C. § 1400(b); see also
`
`TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 137 S. Ct. 1514, 1519 (2017) (“1400(b) ‘is
`
`the sole and exclusive provision controlling venue in patent infringement actions”). For
`
`purposes of the first prong of Section 1400(b), “a domestic corporation ‘resides’ only in its State
`
`of incorporation for purposes of the patent venue statute.” TC Heartland, 137 S. Ct. at 1517.
`
`The second prong, a “regular and established place of business,” requires that: “(1) there must be
`
`a physical place in the district; (2) it must be a regular and established place of business; and (3)
`
`it must be the place of the defendant.” In re Cray Inc., 871 F.3d 1355, 1360 (Fed. Cir. 2017).
`
`“[T]he regular and established place of business standard requires more than the minimum
`
`contacts necessary for establishing personal jurisdiction or for satisfying the doing business
`
`standard of the general venue provision” applicable to non-patent cases. Id. at 1361. Further,
`
`“upon motion by the Defendant challenging venue in a patent case, the Plaintiff bears the burden
`
`of establishing proper venue.” In re: ZTE (USA) Inc., 890 F.3d 1008, 1013 (Fed. Cir. 2018).
`
`Venue is not proper in this District for Bot’s patent infringement claims against SIE. The
`
`first prong of Section 1400(b) is not satisfied because SIE is a California limited liability
`
`company, not a New York company. (Ex. 1, Anderson Dec. ¶ 4). The second prong is also not
`
`satisfied because SIE does not have a “regular and established place of business” in this District.
`
`
`
`3
`
`

`

`Case 1:19-cv-07529-DLC Document 17 Filed 10/03/19 Page 7 of 9
`
`
`
`SIE has its headquarters in San Mateo, California. (Id. ¶ 4). SIE does not have any office
`
`or facility in this District, nor anywhere in the State of New York. (Id. ¶ 7). Thus, SIE does not
`
`have any place of business in this District, let alone the “regular and established place of
`
`business” required by Section 1400(b). Venue for Bot’s patent claims against SIE is therefore
`
`improper in this District.
`
`Nor has Bot provided any basis for satisfying its burden of establishing venue in this
`
`District. Bot’s Complaint offers a conclusory assertion that “[v]enue is proper in this Court
`
`pursuant to 28 U.S.C. §§ 1391(b) and (c) and 1400(b).” (Dkt. 1 ¶ 4). As an initial matter, the
`
`venue provisions of Section 1391 are not applicable to patent cases against domestic entities and
`
`cannot support venue as to SIE. Rather, Section “1400(b) ‘is the sole and exclusive provision
`
`controlling venue in patent infringement actions . . . .” TC Heartland, 137 S. Ct. at 1519. As
`
`discussed above, the requirements of Section 1400(b) are not satisfied here because SIE is not
`
`incorporated in New York and does not have a “regular and established place of business” in this
`
`District.
`
`Elsewhere in its Complaint, Bot purports in passing to assert infringement against
`
`“Sony’s PlayStation game servers” allegedly located in “Bronx, New York”:
`
`Sony operates the PlayStation Network on PlayStation game servers, powerful
`computers used to store files including user account information, social network
`information, gaming programs, and gaming results. Sony’s PlayStation game
`servers are located throughout the United States, including in Bronx, New York.
`
`(Dkt. 1 ¶ 30). But this allegation is incorrect. SIE has a contractual arrangement with a third
`
`party cloud provider to handle the PlayStation® Network services at issue using servers of the
`
`third party, not servers of SIE. (Ex. 3, Cacioppo Dec. ¶ 5). In the limited instances where such
`
`services are handled by servers of SIE, those servers are not located in the State of New York.
`
`(Id. ¶¶ 5-6). Accordingly, Bot failed to meet its burden of establishing venue in this District.
`
`
`
`4
`
`

`

`Case 1:19-cv-07529-DLC Document 17 Filed 10/03/19 Page 8 of 9
`
`
`
`See Davidson v. Chung Shuk Lee, No. 17 CV 9820 (VB), 2018 WL 6047830, at *2 (S.D.N.Y.
`
`Nov. 19, 2018) (explaining that in considering a 12(b)(3) motion, a court takes “all allegations in
`
`the complaint as true, unless challenged by defendants”).
`
`B.
`
`Bot’s Complaint Against SIE Should Be Transferred to the Northern District
`of California.
`
`Under 28 U.S.C. § 1406(a), if venue is found to be lacking, the Court has discretion to
`
`either dismiss or to transfer to another district. Here, Bot’s infringement assertions against SIE
`
`should be transferred to the Northern District of California. See In re Cray, 871 F. 3d at 1367
`
`(finding improper venue and ordering to “transfer the case pursuant to § 1406(a) to an
`
`appropriate venue to be determined by the district court”).
`
`Both SIE and Bot have their headquarters in San Mateo, California, which is located
`
`within the Northern District of California. Activities conducted by SIE in the Northern District
`
`of California include research, development, marketing, sales, and other functions relating to
`
`PlayStation® products. (Ex. 1, Anderson Dec. ¶ 6). Bot itself has also listed its address in San
`
`Mateo, California, in a public filing with the U.S. Patent Office relating to the purported
`
`assignment of the patents asserted in this case. (Ex. 2). The Northern District of California is
`
`therefore an appropriate, and mutually convenient, forum for the parties to litigate this case. See,
`
`e.g., Peerless Network, Inc. v. Blitz Telecom Consulting, LLC, No. 17-CV-1725 (JPO), 2018 WL
`
`1478047, at *5 (S.D.N.Y. Mar. 26, 2018) (finding improper venue and transferring under Section
`
`1406(a) to the district where “[a]ll defendants reside” and where the parties had other litigation);
`
`Seitz v. Bd. of Trustees of the Pension Plan of the New York State Teamsters Conference Pension
`
`& Ret. Fund, 953 F. Supp. 100, 103 (S.D.N.Y. 1997) (transferring case under Section 1406(a) to
`
`the district where the “Defendant is located” and declining to allow the plaintiff “a second
`
`chance at choosing an appropriate venue”); Post Consumer Brands, LLC v. Gen. Mills, Inc., No.
`
`
`
`5
`
`

`

`Case 1:19-cv-07529-DLC Document 17 Filed 10/03/19 Page 9 of 9
`
`
`
`17-CV-2471 SNLJ, 2017 WL 4865936, at *3 (E.D. Mo. Oct. 27, 2017) (transferring case under
`
`Section 1406(a) to the district “where defendants are headquartered”). Accordingly, Bot’s
`
`claims against SIE should be transferred to the Northern District of California.
`
`IV. CONCLUSION
`
`For the foregoing reasons, SIE respectfully requests that the Court transfer Bot M8’s
`
`Complaint against SIE to the Northern District of California due to improper venue.
`
`
`
`DATED: October 3, 2019
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
` /s/ Gregory S. Arovas
`
`
`Gregory S. Arovas
`KIRKLAND & ELLIS LLP
`601 Lexington Avenue
`New York, NY 10022
`Telephone: (212) 446-4800
`Facsimile: (212) 446-4900
`Email: greg.arovas@kirkland.com
`
`David Rokach (pro hac vice pending)
`KIRKLAND & ELLIS LLP
`300 North LaSalle
`Chicago, IL 60654
`Telephone: (312) 862-2000
`Facsimile: (312) 862-2200
`Email: david.rokach@kirkland.com
`
`Counsel for Sony Interactive Entertainment
`LLC
`
`6
`
`