DECISION AND ORDERJURISDICTIONThis matter was referred to the undersigned for all dispositive and non-dispositive motions by Order of District Judge William M. Skretny, filed November 16, 2017 (Dkt. 98). It is presently before the court on Defendant’s motion, filed December 11, 2017, to dismiss pursuant to Fed. R. Civ. P. 12(b)(1) for lack of subject matter jurisdiction, Fed. R. Civ. P. 12(b)(3) for lack of proper venue, and, alternatively, pursuant to 28 U.S.C. §1406(a), to transfer the case to the Northern District of Alabama.1 (Dkt. 101) (“Defendant’s motion”).BACKGROUND AND FACTS2This patent infringement action alleges Defendant’s infringement of Plaintiffs’ ’281, ’609 and ’639 patents for Plaintiffs’ spot welding cap changer invention facilitates spot welding. Plaintiffs’ ’609 continuation patent was added by stipulation in Plaintiffs’ Third Amended Complaint; Plaintiffs’ ’639 and ’814 continuation patents were added by court permission, over Defendant’s opposition, in Plaintiff’s Fourth and Fifth Amended Complaints. See 002152706 Ontario Limited, et al. v. Changers & Dresser, Inc., 2016 WL 9488725, *1 (W.D.N.Y. Oct. 31, 2016) (permitting Fourth Amended Complaint); 002152706 Ontario Limited, et al. v. Changers & Dresser, Inc., 15-CV-00020S(F), Dkt. 97, Nov. 13, 2017 (permitting Fifth Amended Complaint). In the original Complaint, the Amended Complaint (Dkt. 5), and Plaintiffs’ First, Second, Third, and Fourth Amended Complaints, Plaintiffs alleged venue was proper in this district under 28 U.S.C. §1391 (the general venue statute) and §1400(b) (the patent venue statute). In Defendant’s motion to dismiss the Amended Complaint, filed March 31, 2015 (Dkt. 8), Defendant did not object to Plaintiffs’ asserted venue in this district. The parties stipulated to permit Plaintiffs to file a Second Amended Complaint (Dkt. 11), which Judge Skretny approved on April 21, 2015 (Dkt. 13). In Defendant’s answer to the Second, Third, and Fourth Amended Complaints, which asserted the same basis for venue, Defendant admitted venue was proper.3 See, e.g., Dkt. 5513. Defendant further asserted venue was proper for Defendant’s invalidity counterclaims asserted in Defendant’s Answers to Plaintiffs’ Second, Third, and Fourth Amended Complaints. See, e.g., Dkt. 55 (Answer to Fourth Amended Complaint)7 (“Venue is proper in this district.”). By papers filed June 6, 2017 (Dkt. 71), Defendant moved, pursuant to Fed. R. Civ. P. 12(b)(3) (“Rule 12(b)(3)”), together with Memorandum of Law in support (Dkt. 71-1), to dismiss Plaintiffs’ Fourth Amended Complaint for lack of proper venue, or transfer the case to the Northern District of Alabama pursuant to 28 U.S.C. §1406(a) (“§1406(a)”), based on the Supreme Court’s recent decision in TC Heartland LLC v. Kraft Foods Grp. Brands, LLC, 137 S.Ct. 1514 (2017) (“TC Heartland”), decided May 22, 2017, in which the Court held that patent cases are required to satisfy the patent venue requirements of 28 U.S.C. §1400(b) and may not be venued pursuant to the general venue provisions of 28 U.S.C. §1391(c) (“Defendant’s motion”). Plaintiffs’ Memorandum of Law In Opposition To Defendant’s Motion was filed June 30, 2017 (Dkt. 81); Defendant’s Reply Memorandum was filed July 7, 2017 (Dkt. 82).On December 11, 2017, Defendant moved to dismiss Plaintiffs’ Fifth Amended Complaint filed on November 27, 2017 (Dkt. 100) pursuant to Fed. R. Civ. P. 12(b)(2) (“Rule 12(b)(2)”) for lack of subject matter jurisdiction based on Plaintiffs’ lack of standing as well as improper venue in this district under Rule 12(b)(3) (“Defendant’s Rule 12(b)(2) motion”). Plaintiffs’ Memorandum of Law in opposition was filed January 5, 2018 (Dkt. 105); Defendant’s Reply Memorandum was filed January 19, 2018 (Dkt. 108). Defendant’s December 2017 Rule 12(b)(2) motion asserts that because the Plaintiffs’ original patent assignee, Copperhead Industrial, Inc. (“Copperhead”), an Ontario corporation, is not the named Plaintiff, the Plaintiff 002152706 Limited Ontario corporation lacks standing. By papers filed December 22, 2016, Plaintiffs’ cross-moved to substitute Copperhead as the real party in interest as plaintiff in this action, in lieu of 002152706 Ontario Limited, which corporation Plaintiffs contend was mistakenly named as assignee of the original patent and one of the Plaintiffs in this action. (Dkt. 65) (“Plaintiffs’ Cross-Motion). Plaintiff JEC Distributors Inc. is a U.S. distributor of Plaintiffs’ spot welding cap changers whose standing is also subject to Defendant’s motion. In Plaintiffs’ Cross-Motion Plaintiffs also sought a stay of Defendant’s parallel declaratory action based on the same patent infringement claims Defendant commenced in 2016 in the Northern District of Alabama (“the Alabama action”), which action has been stayed by the district court in the Alabama action pending determination of Plaintiffs’ and Defendant’s motions in this district. See Dkt. 71-1 at 9 n. 4. Defendant’s motion to dismiss or transfer is predicted on the fact, not disputed by Plaintiffs, that Defendant is neither a New York State corporation nor does it have a principal place of business in this district as required by §1406(b) for proper venue of a patent case. Oral argument on Defendant’s motion was deemed unnecessary.DISCUSSION1. Improper Venue.In TC Heartland, the Supreme Court reaffirmed its decision in Fourco Glass Co. v. Transmirra Products Corp., 353 U.S. 222, 226 (1957), that 28 U.S.C. §1400(b), the patent venue statute, controls the question of the proper venue for a patent infringement claim against a defendant corporation. TC Heartland Products Corp., 137 S.Ct. at 1520-21. Specifically, the Court held that §1400(b)’s requirement that a corporate defendant be sued either where it “resides,” i.e., its place of incorporation or corporate domicile, or where it both has infringed and maintains a principal place of business, does not include the broader definition of corporate residence enacted by later amendment to the general venue statute as enacted in 1988 and 2011, 28 U.S.C. §1391(a)(c) (“§1391__”), viz., corporation is a resident of “any district in which [the defendant] is subject to the court’s personal jurisdiction with respect to the civil action in question.” §1391(c). The Court further held that subsequent decisions, particularly VE Holding Corp. v. Johnson Gas Appliance Co., 917 F.2d 1574 (Fed. Cir. 1990) (“VE Holding Corp.”), that §1391(c)’s then recently enacted broader definition of corporate residence also redefined the term “resides” as used in §1400(b), were erroneous thereby requiring that the term as used in §1400(b) means the defendant’s domicile, or, in the case of a defendant corporation, the defendant’s “‘state of incorporation only.’” TC Heartland, LLC, 137 S. Ct. at 1519 (quoting Fourco Glass Co., 353 U.S. at 226). Here, the parties agree that Defendant, a subsidiary of Kyokutoh Co. Ltd., a Japanese entity, is an Alabama corporation with its principal place of business in Birmingham, Alabama within the Northern District of Alabama. Dkt. 1008. Plaintiffs do not allege Defendant maintains a principal office in this district. See Dkt. 11
