Uni-Sys., LLC v. U.S. Tennis Ass'n Nat'l Tennis Ctr. Inc.
| Decision Date | 07 April 2020 |
| Docket Number | 17-CV-147(KAM)(CLP) |
| Parties | UNI-SYSTEMS, LLC, Plaintiff, v. UNITED STATES TENNIS ASSOCIATION NATIONAL TENNIS CENTER INCORPORATED, ROSSETTI INC., MATTHEW L. ROSSETTI ARCHITECT, P.C., HUNT CONSTRUCTION GROUP, INC., HARDESTY & HANOVER, LLC, HARDESTY & HANOVER, LLP, MORGAN ENGINEERING SYSTEMS, INC., MORGAN KINETIC STRUCTURES, INC., MORGAN AUTOMATION, INC., and GEIGER GOSSEN CAMPBELL ENGINEERS, P.C., DBA GEIGER ENGINEERS, Defendants. |
| Court | U.S. District Court — Eastern District of New York |
Plaintiff Uni-Systems, LLC ("Uni-Systems") brings this action against Defendants United States Tennis Association National Tennis Center ("USTA"), Rossetti Inc. and Matthew L. Rossetti Architect, P.C. ("Rossetti P.C.") (collectively, "Rossetti"), Hunt Construction Group, Inc. ("Hunt"), Hardesty & Hanover, LLC and Hardesty & Hanover, LLP (collectively, "Hardesty & Hanover"), Morgan Engineering Systems, Inc. ("Morgan Engineering") and its subsidiaries, Morgan Kinetic Structures, Inc. ("Morgan Kinetic"), and Morgan Automation, Inc. ("Morgan Automation") (collectively, "Morgan"), and Geiger Campbell Engineers, P.C., ("Geiger") (collectively, "Defendants"), alleging patent infringement and trade secret appropriation in connection with Defendants' design, manufacture, and operation of the retractable roofs at the Arthur Ashe Stadium (the "Ashe Retractable Roof") and the Louis Armstrong Stadium (the "Armstrong Retractable Roof") in Queens, New York.
Pending before the Court are the renewed motions of Rossetti and Morgan to dismiss this action for improper venue pursuant to Rule 12(b)(3) of the Federal Rules of Civil Procedure (the "Rules") or, in the alternative, to transfer this action to the districts in which each group resides in the interests of justice pursuant to 28 U.S.C. § 1406(a). This court, by order dated October 5, 2018, had ruled that venue was improper as to the claims against Rossetti and Morgan and granted leave to replead after venue-focused discovery. (ECF No. 265, Memorandum & Order ("M&O").) Both Rossetti and Morgan again argue that venue is improper in this district under 28 U.S.C. § 1400(b), the exclusive patent venue statute, because neither defendant "reside[s]" or has a "regular and established place of business" in this judicial district. For the reasons set forth below, the Court hereby GRANTS both motions and transfers Uni-Systems' claims to the appropriate venues.
Uni-Systems describes itself as the "leading designer of retractable roof systems in the United States" and has designed and implemented retractable roof systems for major stadiums across the country, including Minute Maid Ballpark and Reliant Stadium in Houston, Texas; Marlins Ballpark in Miami, Florida; Lucas Oil Stadium in Indianapolis, Indiana; Cowboys Stadium near Dallas, Texas; and University of Phoenix (Cardinals) Stadium in Glendale, Arizona. (ECF No. 325, Second Amended Complaint ("SAC"), ¶ 18.) In connection with its retractable roof designs, Uni-Systems developed valuable intellectual property, including U.S. Patent Nos. 6,789,360 ("the Retention Mechanism patent") and 7,594,360 ("the Lateral Release patent"), and trade secrets in nine categories. (Id. ¶¶ 19-36.)
Around 2011, Uni-Systems learned that USTA planned to construct a retractable roof over the Arthur Ashe Stadium at the USTA Billie Jean King National Tennis Center in Flushing, Queens (the "NTC"). (Id. ¶ 78.) USTA hired Hunt to serve as the project design-builder. (Id. ¶ 79.) As the design-builder, Hunt contracted with Rossetti P.C., for design activities andresponsibilities. (Id. ¶ 80.) Rossetti P.C. served as the official project architect and worked with Rossetti Inc. to provide design and architectural services. (Id.) Hunt contracted with Morgan Kinetic, a division of Morgan Engineering, to supply roof mechanism design and construction services for the project. (Id. ¶ 81.) Morgan Engineering subcontracted with Hunt to provide design-build services to engineer and fabricate the retractable roof. (Id.) Uni-Systems alleges the Ashe Retractable Roof infringes on its Retention Mechanism and Lateral Release patents. (Id. ¶¶ 92-96.)
Uni-Systems later learned that USTA had hired Hunt to serve as the construction manager responsible for construction of a retractable roof over the Louis Armstrong Stadium at the NTC. (Id. ¶¶ 97-98.) The defendants reprised almost identical roles to those played in constructing the Ashe Retractable roof. Rossetti P.C. served as the project architect and worked with Rossetti Inc. in connection with designing the Armstrong Retractable Roof. (Id. ¶ 99.) Morgan Kinetic provided construction and electrical design services for the project, subcontracting the former to Morgan Engineering and the latter to Morgan Automation. (Id. ¶ 100.) Uni-Systems alleges that the Armstrong Retractable Roof infringes on its Lateral Release patent. (Id. ¶¶ 109-11.)
Whether venue in the Eastern District of New York as to Rossetti and Morgan is proper turns on whether either has a "regular and established place of business" in this district. The following summarizes the facts relevant to this inquiry.
Rossetti Inc. is an architectural firm incorporated in Michigan with its place of business at 160 West Fort Street in Detroit, Michigan. (ECF No. 345-3, Decl. of David Richards ("Richards Decl."), ¶ 4.) Rossetti P.C. is a New York corporation with a registered address at 1359 Broadway in Manhattan, which it uses to receive service of process and limited mail. (Id. ¶¶ 8-9.) Rossetti P.C. was formed to comply with New York's requirement that an architect of record in an in-state project be registered in the state. (Id. ¶¶ 11-12.) Rossetti P.C. has no employees of its own, shares a physical space with Rossetti Inc., and delegates its architectural work to employees of Rossetti Inc. (Id. ¶¶ 8, 15.)
Rossetti's relationship with USTA began in 1990 with its design of the Arthur Ashe Stadium. (ECF No. 348-1, Rossetti 30(b)(6) Deposition Transcript ("Rossetti Dep."), at 13:10-15.) After completion of the Arthur Ashe Stadium in 1997, Rossetti served as the architect for the USTA's renovation of the LouisArmstrong Stadium from 1997 to 1998. (Id. at 36:01-02.) Rossetti continued to work with USTA on other projects from at least 2000 through 2012, assisting in, inter alia, the development of a master plan for the NTC. (Id. at 46:01-08, 48:08-18.) Rossetti sent employees to the NTC during this period for meetings. (Id. at 48:08-18, 51:12-22.)
More recently, since 2011, Rossetti has participated in roughly a dozen projects2 at the NTC, including the Ashe Retractable Roof (2013-2016) and the Armstrong Retractable Roof (2016-2018). (ECF No. 348-2, Rossetti's Second Supplemental Responses to Uni-Systems' First Set of Individual Interrogatories ("2nd Supp. Responses"), at 9-11.) Rossetti generally provided architectural services for projects in six phases: (1) Programming; (2) Concept Development; (3) Schematic Design; (4) Design Development; (5) Construction Documents; and (6) Construction Administration. (Rossetti Dep. at 14:11-15:01; 16:13-22; 19:06-12; 23:17-24:03; 26:01-06; 27:07-16; 37:22-24, 80:04-25.) Rossetti's work on its projects for NTC between 2011and 2018, except local meetings and field services during construction, was performed in Rossetti's Detroit, Michigan facility by Rossetti's employees in Detroit. (Richards Decl. ¶ 5.)
Rossetti was required to send employees from Detroit to visit the NTC for certain portions of its work. Rossetti employees traveled to the NTC for on-site meetings during the concept development phase (see Rossetti Dep. at 17:08-11) and visited the construction sites to observe construction during the construction administration phase (see id. at 32:03-08) of its projects. In practice, Rossetti's attendance during the construction administration phase of its projects varied, ranging from once every two weeks to several days a week, at the end of the phase. (Rossetti Dep. at 36:14-37:17, 39:02-40:12.) On average, during the period between 2011 and 2018, a Rossetti employee traveled to the Eastern District of New York once every two weeks. (2nd Supp. Responses, at 8.) To facilitate visits, Rossetti was granted reasonable access tothe project sites. (Ashe Agreement (USTA-Rossetti), Ex. A § V(f), 19; Armstrong Agreement (USTA-Rossetti), Ex. B.1, 23-24.)
In addition to having to attend on-site meetings and observe construction, as detailed above, Rossetti had other responsibilities, which occurred primarily during the construction administration phase of its projects. Rossetti reviewed trade submittals, which are documents or samples, created based on Rossetti's designs, of the actual materials to be used in a project. (Rossetti Dep. at 28:06-29:02.) Rossetti reviewed the submittals to confirm they matched the design's scope and intent. (Id.) Rossetti's 30(b)(6) witness testified that although it may not be "wise" to proceed without Rossetti's approval of a trade submittal, Rossetti "[could not] prevent someone from proceeding." (Id. at 29:06-29:11.) Rossetti responded to requests for information, which were generally requests for interpretations of Rossetti's construction documents. (Id. at 30:02-25.) Rossetti also reviewed and certified requests for progress payments, which entailed Rossetti confirming, based on its observations, that certain work was completed and should be paid for. (Id. at 31:01-21.) (See also generally Armstrong Agreement (Hunt-Rossetti), Art. 1.12.4; Armstrong Agreement (USTA-Ro...
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