United States District Court, D. Delaware
[Copyrighted Material Omitted]
[Copyrighted Material Omitted]
Jarret P. Hitchings, Esquire of Duane Morris LLP, Wilmington, Delaware, Counsel for Plaintiff, Of Sandra A. Jeskie, Esquire of Duane Morris LLP.
Steven K. Kortanek of Womble Carlyle Sandridge & Rice, LLP, Counsel for Defendant.
Sue L. Robinson, District Judge.
On October 31, 2013, inno360, Inc. (" plaintiff') filed the present action against Zakta, LLC (" defendant" ). (D.I. 1) Plaintiff alleges eight causes of action: (1) trade dress infringement under 15 U.S.C. § 1125(a); (2) unfair competition under 15 U.S.C. § 1125(a); (3) common law unfair competition; (4) deceptive trade practices under the Delaware Uniform Deceptive Trade Practices Act, 6 Del. C. § 2531 et seq. ; (5) misappropriation and misuse of confidential trade secret information, without authorization, under the Delaware Uniform Trade Secrets Act, 6 Del. C. § 2001 et seq. ; (6) breach of contract; (7) tortious interference with a contract; and (8) tortious interference with a business relationship. (D.I. 1 at ¶ ¶ 67, 76, 82, 86, 94, 101, 106, 112) Plaintiff further seeks declaratory relief pursuant to 28 U.S.C. § 2201 that: (1) no royalties are due for 2013 and beyond; (2) the license agreement has been terminated, not renewed and/or cancelled; and (3) plaintiff may terminate the license agreement without cause. ( Id. at ¶ ¶ 118, 125, 131) Presently before the court is defendant's motion to dismiss for lack of personal jurisdiction or, in the alternative, to transfer venue to the United States District Court for the Southern District of Ohio (Western Division at Cincinnati), and plaintiffs request for jurisdictional discovery. (D.I. 5; D.I. 8 at 12)
The court has jurisdiction pursuant to 15 U.S.C. § 1121 as well as 28 U.S.C. § § 1332 and 1367(a). For the reasons that follow, the court transfers this action to the United States District Court for the Southern District of Ohio. Plaintiff's request for jurisdictional discovery is denied.
A. The Parties
Plaintiff is a corporation organized and existing under the laws of the State of Delaware, with its place of business in Stamford, Connecticut. (D.I. 1 at ¶ 2) Plaintiff develops and distributes a cloud-based innovation management platform to leading research and development groups around the world. ( Id. ) Among other features, plaintiff's platform enables users to conduct complex searches and organize them using a proprietary visualization layout. ( Id. )
Defendant is a limited liability company organized and existing under the laws of the State of Ohio, with its principal place of business in Cincinnati, Ohio. ( Id. at ¶ 3) Defendant owns and develops technologies related to collaborative search, semantics, search-based digital curation, and social networking. ( Id. )
B. The Underlying Facts
On May 25, 2011, the parties entered into a Software OEM License Agreement (" the Agreement" ) (D.I. 1, ex. A), whereby plaintiff paid defendant for certain projects related to integrating defendant's licensed software into plaintiff's existing technology platform. (D.I. 1 at ¶ ¶ 18-21) Plaintiff agreed to pay defendant a royalty based on total revenues received from its customers for use of the licensed software as incorporated into plaintiff's application. ( Id. at ¶ 22) The Agreement was to commence on May 17, 2011 and remain in effect until canceled in writing by either party. ( Id. at ¶ 23)
On October 21, 2012, plaintiff allegedly removed all of defendant's code from its technology platform, and has not since included any of the licensed software in the platform accessed by its customers. ( Id. at ¶ 30-31) On November 30, 2012, plaintiff notified defendant in a letter that the licensed software had been removed from its technology platform, and that it was terminating the Agreement. ( Id. at ¶ 32; D.I. 7, ex. C) The termination letter indicated that plaintiff wished to discuss both a payment plan for royalties which had accrued during 2012 and a structure for the parties to continue working together on projects. (D.I. 7, ex. C) The parties thereafter entered into a payment agreement by ...