GARY TAYLOR, District Judge
I. BACKGROUND
This is an action for a declaratory judgment that Plaintiff's products do not infringe Defendants' patent. Defendant General Patent Corp. is a New York corporation. Defendant Acticon Technologies is a New York limited liability company, and a wholly owned subsidiary of General Patent. Defendants move to dismiss based on insufficiency of service of process, see Fed.R.Civ.P. 12(b)(5), and because there is an action pending in the District Court for the Southern District of New York involving the same patents and parties. In the alternative, Defendants move for a transfer of venue to the Southern District of New York.
II. DISCUSSION
A. Sufficiency of Service
Service on a corporation or association may be made by delivering a copy of the summons and complaint to a corporate officer, a managing or general agent, or any other agent authorized to receive process by appointment or operation of law. Fed.R.Civ.P. 4(h). Service may also be made under the law of the state in which the District Court sits, or the state in which service is made. Id.
Under California law, a summons may be served on a corporation or unincorporated association by delivering a copy to the legally designated agent for service of process, the President or head of the corporation, a vice-president, a secretary or assistant secretary, a treasurer or assistant treasurer, a general manager, or other person authorized to receive service of process. See Cal. Civ. P. Code §§ 416.10, 416.40. In New York, service may be made on an agent authorized by law to receive service, or on an officer, director, managing or general agent, or cashier or assistant cashier. N.Y.C.P.L.R. § 311(1).
Plaintiffs attempted to serve Defendants by giving an envelope to Naava Cooper, an employee of General Patent. The process server did not identify himself or the contents of the envelope, and never inquired as to Cooper's employer, position, or authorization to accept service of process. Cooper is not an officer, director, or agent for process service of General Patent — she is an employee. She is not an employee, officer, or agent of Acticon Technologies, Service was therefore defective.
Plaintiffs argue Defendants waived their right to object to the defect in service of process by filing stipulations as to different matters. But the stipulations expressly preserved Defendants' right to answer, move, or plead under Rule 12 of the Federal Rules of Civil Procedure, This motion is made under Rule 12. It was not waived.
"Generally, if it appears that effective service can be made and there has been no prejudice to the defendant, the court will quash service rather than dismiss the action." Wm. W. Schwarzer, et al.,California Practice Guide: Fed. Civ. Pro. Before Trial, § 5, 534 (Rutter Group, 2003). Because Defendants have not shown prejudice, the Court hereby quashes the service and enlarges the period for service so Plaintiffs' re-service of Defendants on August 4, 2003, is effective.
B. Action Pending in New York
Before any action was filed, Defendants sent each Plaintiff a series of letters claiming that Plaintiffs' products infringed Defendants' patents and seeking a response from Plaintiffs. In the last of these letters, Defendants stated they would refer the matter to their patent litigation counsel. Rather than wait to be sued, Plaintiffs filed this declaratory judgment action.
Defendants argue this action should be dismissed because it amounts to an abuse of the Declaratory Judgment Act and an effort to deprive them of their "traditional choice of forum and timing. . . ."Hanes Corp. v. Millard, 531 F.2d 585, 593 (D.C. Cir. 1976).
As the Hanes Court explained:
[O]ne of the most common and indisputably appropriate uses of the declaratory judgment procedure is to enable one who has been charged
with patent infringement to secure a binding determination of whether proposed conduct will infringe a patent in question without waiting until he becomes the defendant in an actual infringement suit.
Id. at 592. The discussion in
Hanes applies here. Plaintiffs were told `several times they were infringing Defendants' patent, then threatened with litigation. Rather than wait to be sued and face the uncertainty that they might accrue further damages while they continued to manufacture their products, or stop manufacturing their products, they filed this declaratory judgment action. The course of action was appropriate.
See id.
Defendants also seek to have this action transferred to the Southern District of New York because they filed a patent infringement action there after Plaintiffs had already filed this action.
A court can transfer a case if venue is improper, or for the convenience of the parties and witnesses in the interest of justice.See 28 U.S.C. § 1404(a), 1406(a). Defendants argue the interests of justice require transfer to the Southern District of New York because their patent infringement suit is pending there. They do not argue venue is improper in this Court, or the convenience of the parties favors New York. They have not shown a proper reason to transfer.
III. DISPOSITION
The motions to dismiss and transfer venue are DENIED. The hearing of September 8, 2003, is taken off-calendar