Shenzhen OKT Lighting Co., Ltd. v. JLC-TECH LLC

CourtDistrict Court, S.D. New York
DecidedSeptember 28, 2021
Docket1:20-cv-05062
StatusUnknown

This text of Shenzhen OKT Lighting Co., Ltd. v. JLC-TECH LLC (Shenzhen OKT Lighting Co., Ltd. v. JLC-TECH LLC) is published on Counsel Stack Legal Research, covering District Court, S.D. New York primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Shenzhen OKT Lighting Co., Ltd. v. JLC-TECH LLC, (S.D.N.Y. 2021).

Opinion

UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK SHENZHEN OKT LIGHTING CO., LTD, Plaintiff, OPINION & ORDER – against – 20 Civ. 5062 (ER) JLC-TECH LLC, Defendant.

Ramos, D.J.: Shenzhen OKT Lighting Co., Ltd., a Chinese lighting company, brings this action for declaratory judgment of patent noninfringement, patent invalidity, and patent unenforceability against JLC-Tech LLC, a lighting company based in Massachusetts. Docs. 1, 17. Pending before the Court are JLC’s motion to dismiss Shenzhen’s First Amended Complaint (“FAC”) for lack of personal jurisdiction and improper venue, and Shenzhen’s counter-motion for leave to file a Second Amended Complaint (“SAC”). Docs. 28, 33. For the reasons set forth below, JLC’s motion to dismiss is GRANTED, and Shenzhen’s counter-motion for leave to file an amended complaint is DENIED. I. FACTUAL AND PROCEDURAL BACKGROUND A. Facts Alleged in Shenzhen’s First Amended Complaint �e following facts are taken from the FAC and construed in the light most favorable to Shenzhen. �e instant action arises from a dispute between the parties over their respective patented overhead lighting fixture products: JLC’s T-Bar LED lighting fixture and Shenzhen’s T-Grid LED lighting system. ¶¶ 5, 9, 11, 12.1 Both the T-Bar and the T-Grid are thin rectangular LED lighting fixtures that can be installed around ceiling panels in

1 Unless otherwise noted, citations to “¶ _” refer to the FAC, Doc. 17. various configurations. See Doc. 17-2. JLC first obtained a patent for its T-Bar lighting fixture, U.S. Patent No. 8,177,385 (“the ‘385 Patent”), on May 15, 2012. ¶¶ 11, 56. �e ‘385 Patent is the grandparent of JLC’s patent at issue in the present case, U.S. Patent No. 10,508,805 (“the ‘805 Patent”). ¶ 4, 11. �e United States Patent and Trademark Office issued JLC the ‘805 patent on December 17, 2019. ¶ 4. Shenzhen holds its own patent for its T-Grid product, U.S. Patent No. 10,125,934 (“the ‘934 Patent”), which was issued on November 13, 2018. ¶ 20. JLC is a limited liability company organized under Massachusetts law with its principal place of business in Pembroke, Massachusetts. ¶ 2. JLC maintains business relationships, including sales, distribution and licensing relationships, with two representatives in New York State who sell its T-Bar lighting fixture. ¶¶ 30-32. JLC’s representatives in New York are Stan Deutsch Associates (“Deutsch”), which sells JLC’s T-Bar in New York City, Long Island, Westchester, and Rockland, and Light Spec, which does business in Rochester, Buffalo, Amherst, Albany, and Syracuse. ¶ 31. Shenzhen, a Chinese company with its principal place of business in Shenzhen, China, ¶ 1, also has customers in New York, including Arlee Lighting Corporation, based in Inwood, New York, 2 ¶ 16. Prior to the disruptions of the COVID-19 pandemic, both JLC and Shenzhen participated in lighting industry trade shows. ¶¶ 9, 11-12, 14-15. Of these, the annual LightFair International Trade Show “is the most important . . . lighting exhibition trade show in the United States, and a unique opportunity for manufacturers of architectural lighting to not only exhibit their designs but to compete and establish new customer relationships . . .” ¶ 10. LightFair does not have a fixed location and takes place in

2 Shenzhen’s FAC asserts that Arlee Lighting, located at 125 Doughty Boulevard, Inwood, NY 11096, is within the Southern District of New York. ¶ 16. In its opposition to Shenzhen’s Motion to Amend the Complaint, JLC points out that Arlee Lighting is within the Eastern District of New York. Doc. 37 at 10. In fact, 125 Doughty Boulevard, Inwood, NY 11096 is in Nassau County, in the Eastern District of New York. different major cities in the United States. See ¶ 9, 11, 15. Shenzhen asserts that JLC attended three lighting industry trade shows in New York, New York from 2014 to the filing of the FAC. In September 2014, Deutsch exhibited JLC’s T-Bar lighting fixture at its showcase at the Metropolitan Pavilion in New York, New York. ¶ 34. From May 5 through May 7, 2015, JLC attended LightFair in New York, New York and exhibited its T-Bar lighting fixture there. ¶ 9. Deutsch also represented JLC at the 2015 LightFair. ¶ 35. In October 2018, JLC attended the Deutsch Showcase trade show in New York, New York, where it again exhibited the T-Bar lighting fixture. ¶¶ 12, 36. �e litigation history between JLC and Shenzhen began, not in New York, but at the 2017 LightFair held in Pennsylvania. ¶ 11. During the 2017 LightFair, JLC sued Shenzhen in the Eastern District of Pennsylvania for patent infringement.3 JLC alleged that Shenzhen’s then-version of the T-Grid lighting fixture—at that time known as the T- Bar Light or T-Bar Light with Lens4—infringed JLC’s ‘385 patent, the grandparent of the ‘805 patent at issue here. ¶¶ 11, 24. Shortly after commencing the suit, JLC informed Shenzhen that it intended to seek a temporary restraining order to require Shenzhen to remove its allegedly infringing products from the 2017 LightFair and to cease manufacturing and selling them. ¶ 11. �e parties settled the case after Shenzhen withdrew its product from the market. Id. Shenzhen’s current T-Grid product has a different design and is covered by its ‘934 patent. ¶¶ 11, 20. LightFair 2020 was scheduled to take place in Las Vegas, Nevada.5 On January 14, 2020—before the COVID-19 pandemic caused the cancelation of LightFair 2020—

3 See JLC-Tech LLC and JLC-Tech IP LLC v. OKT Lighting, a/k/a Shenzhen OKT Lighting Co., Ltd. a/k/a OKT International Lighting Group, Ltd., Civil Action No. 2:17-cv-02043-GJP. 4 See ¶¶ 11, 19; Doc. 33-7; Doc. 33-8. 5 See Coronavirus (COVID-19) Updates and Resources, https://www.lightfair.com/coronavirus-updates- and-resources. While the planned location of the 2020 LightFair is not included in the FAC or in any of the parties’ papers, the Court may “take judicial notice of information contained on websites where the authenticity of the site has not been questioned.” Fernandez v. Zoni Language Centers., Inc., No. 15 Civ. 6066 (PKC), 2016 WL 2903274, at *3 (S.D.N.Y. May 18, 2016), aff’d 858 F.3d 45 (2d Cir. 2017) (citing JLC sent a cease and desist letter to Shenzhen customer Arlee Lighting in New York. ¶¶ 14, 16. JLC’s letter accused Arlee Lighting of infringing JLC’s ‘805 patent, issued just weeks before, on December 17, 2019, through its sales of Shenzhen’s T-Grid lighting fixture. ¶¶ 4, 16-19. JLC’s letter stated that “JLC-Tech will, if necessary, enforce its intellectual property rights,” and pointed to its 2017 suit against Shenzhen. Doc. 17-2 at 3. JLC’s letter gave Arlee Lighting two weeks to contact JLC about an “agreement to remedy this possible infringement.” Id. JLC’s letter did not acknowledge that a different patent—not the ‘805 patent—was at issue in the Eastern District of Pennsylvania suit, nor that the T-Grid’s design had since changed and was covered by its own patent. �e FAC is silent as to Arlee Lighting’s response, if any. On May 12, 2020, JLC sued another Shenzhen customer, North American Lighting, LLC (“North American”) in the District of Maryland for patent infringement of the ‘805 patent, alleging that Shenzhen’s T-Grid product and North American’s counterpart product, known as “Mister T,” infringe the ‘805 patent. ¶¶ 41-43. �e District of Maryland case is currently stayed under the customer suit exception, pending the outcome of the instant action. Doc. 33-1 ¶ 90. Shenzhen alleges that JLC’s threats of litigation to enforce the ‘805 patent, combined with the actual litigation commenced against Shenzhen in the Eastern District of Pennsylvania in 2017 and against North American in the District of Maryland, evince “threats . . . likely to harm [Shenzhen]’s ability to sell its T-Grid [in New York], and to harm [Shenzhen]’s relationships with valued customers here, including but not limited to Arlee Lighting Corporation[.]” ¶ 44.

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Shenzhen OKT Lighting Co., Ltd. v. JLC-TECH LLC, Counsel Stack Legal Research, https://law.counselstack.com/opinion/shenzhen-okt-lighting-co-ltd-v-jlc-tech-llc-nysd-2021.