j2 Global, Inc. et al v. Integrated Global Concepts, Inc.
Filing
34
ORDER GRANTING DEFENDANTS MOTION TO DISMISS PURSUANT TO RULE 12(B)(3) 26 by Judge Dean D. Pregerson. ( MD JS-6. Case Terminated ) (lc). Modified on 6/27/2013 (lc).
1
2
O
3
4
5
6
7
8
UNITED STATES DISTRICT COURT
9
CENTRAL DISTRICT OF CALIFORNIA
10
11
12
j2 GLOBAL, INC., and
ADVANCED MESSAGING
TECHNOLOGIES, INC.,
13
Plaintiffs,
14
15
v.
INTEGRATED GLOBAL CONCEPTS,
INC.,
16
Defendant.
17
___________________________
)
)
)
)
)
)
)
)
)
)
)
)
)
)
Case No. CV 12-03439 DDP (PLAx)
ORDER GRANTING DEFENDANT’S MOTION
TO DISMISS PURSUANT TO RULE
12(B)(3)
[Docket No. 26]
18
19
I. Background
20
j2 Global, Inc. (“j2") has sued Integrated Global Concepts,
21
Inc. (“IGC”) for patent infringement.
(See generally Compl.,
22
Docket No. 1.)
23
Northern District of California (the “Northern District action”) to
24
determine the enforceability of a forum selection clause in a
25
contract between the parties that IGC states implicates the instant
26
case.
27
Stay Proceedings (“Order”), Docket No 23 at 2:15-17.)
28
IGC’s request, this Court stayed the instant case, pending the
In response, IGC brought a suit against j2 in the
(Order Granting in Part Defendant’s Motion to Dismiss or
Pursuant to
1
determination by the Northern District whether it would enforce the
2
forum selection clause.
3
stay and in response to IGC’s suit, j2 brought counterclaims in the
4
Northern District consisting of the same patent infringement claim
5
made in the present case.
6
Docket No. 28 (“On April 12, 2013, j2 asserted the same Patent
7
Claims that are in this case . . . in the Northern District
8
action.”)
9
present Motion to Dismiss Pursuant to Rule 12(b)(3) (“Motion”).
(See generally Order at 4:1-8.)
After the
(See generally Heiser Decl. Ex. 4;
Because of these counterclaims, IGC has filed the
10
(See generally Docket No. 26.)
11
reply brief in this case, j2 filed a Motion to Dismiss Counts IV,
12
V, and Prayer for Punitive Damages of Plaintiff Integrated Global
13
Concepts, Inc.’s (“IGC”) Counterclaims Pursuant to Rule 12(b)(6) in
14
the Northern District action.
15
J2 Global, Inc. et al., No. 12-cv-3434-RMW, Docket No. 47.)1
16
II. Legal Standard for Lifting a Stay
17
On the same day that IGC filed its
(Integrated Global Concepts, Inc. v.
A district court has discretionary power to stay proceedings
18
in its own court.
19
(1936).
20
for imposing the stay are nonexistent or inappropriate, a court has
21
the inherent power and discretion to lift the stay.
22
Elektromedizin GmbH, 271 F. Supp. 2d 64, 74 (D.D.C.2002); Indep.
23
Living Ctr. of S. Cal. v. Douglas, No. CV 08–3315,
24
1622346, at *2 (N.D. Cal. 2012).
See Landis v. North American Co., 299 U.S. 248
When the circumstances have changed such that the reasons
Canady v. Erbe
2012 WL
25
26
1
27
28
The Court takes judicial notice of this filing.
Evid. 201.
2
Fed. R.
1
Comity is “a discretionary doctrine which permits one
2
district to decline judgment on an issue which is properly before
3
another district.”
4
the Army, 611 F.2d 738, 749 (9th Cir. 1979).
5
formulation, the comity doctrine permits a district court to
6
decline jurisdiction over a matter if a complaint has already been
7
filed in another district.”
8
called the “first to file” rule).
9
for scarce judicial resources, comity demands a “flexible approach”
Church of Scientology v. United States Dep’t of
“In its classic
Id. (discussing what is sometimes
However, in light of concerns
10
to allow a district court to choose not to exercise jurisdiction
11
over an earlier filed case when a later case before a different
12
court is further along in the proceedings.
13
district court to “transfer, stay, or dismiss” a case “involving
14
the same parties and issues” as another case.
15
Med. Ctr. v. Shalala, 125 F.3d 765, 769 (9th Cir. 1997).
16
should not be granted when a party will suffer prejudice.
17
Alltrade, Inc. v. Uniweld Products, Inc., 946 F.2d 622, 629 (9th
18
Cir. 1991).
19
III. Analysis
20
Id.
Comity allows a
See Cedars-Sinai
Dismissal
Because conditions have changed since the Court ordered the
21
stay, lifting it is appropriate.
Canady, 271 F. Supp. 2d at 74.
22
Most notably, since the Court ordered the stay, in the Northern
23
District action j2 has counterclaimed the same patent claims at
24
issue here and has moved to dismiss various IGC counterclaims.
25
Thus the Court will decide the dismissal issue.
26
Dismissal initially seems appropriate, as the Northern
27
District action is further along and it involves the same patent
28
3
1
infringement claims.
See Church of Scientology, 611 F.2d at 749.
2
Additionally, j2's patent infringement counterclaims in the
3
Northern District action trigger disclosures that the parties must
4
quickly provide each other.
5
Further, after IGC filed this motion, j2 filed a motion to dismiss
6
various IGC counterclaims in the Northern District action: IGC’s
7
declaratory relief claims for exhaustion and implied license, and
8
IGC’s claim for punitive damages.
9
the Northern District action.)
See N.D. Cal. Patent Rule 3-1.
(See generally Docket No. 47 in
Since j2 has asserted the same
10
patent claims in the Northern District action, the counterclaims it
11
is seeking to dismiss would likely be involved in this action.2
12
Accordingly, dismissal seems appropriate.
13
j2's brief states, but does not provide evidence to support,
14
that IGC plans to “bring a motion to bifurcate the Northern
15
District action.”
16
statement in [a party’s] briefing is not evidence.”
17
Prods., Inc. v. Jimenez, No. 11-CV-5435-LHK, 2012 WL 4713716, at *2
18
(N.D. Cal. Oct. 1, 2012) (citing United States v. Zermeno, 66 F.3d
19
1058, 1062 (9th Cir.1995).)
20
Northern District action is bifurcated and then j2 prevails on
21
IGC’s Contract Claim, then the reason for litigating j2's Patent
22
claims in the Northern District . . . will no longer exists.”
23
at 3:27-4:2.
24
might happen.
Docket No. 28 at 2 :19-20.
An “unsworn
J & J Sports
j2 then states that, “[i]f the
Id.
But j2's argument is based on speculation of what
25
26
2
27
28
It appears that, because of the stay, IGC has not filed an
answer or any counterclaims in this case.
4
1
j2 states that dismissal would cause prejudice.
See Alltrade,
2
Inc. v. Uniweld Products, Inc., 946 F.2d at 629.
3
because it is only entitled to damages for infringement for the six
4
years’ preceding the filing of its complaint, it will lose damages
5
because the instant case was filed before the Northern District
6
action’s counterclaims.
7
no calculations or figures to explain how much, if any, it stands
8
to lose in damages.
9
Prods., 2012 WL 4713716 at *2.
10
Docket No. 28:9-17.
This is insufficient.
j2 states that
However, j2 provides
See J & J Sports
j2 also states that IGC’s Motion is actually a motion for
11
reconsideration, and that it should, thus, be analyzed under the
12
framework of Local Rule 7-18.
13
dismiss.
14
as motions for reconsideration, they generally do so when nothing
15
material has changed between the two motions’ filings.
16
v. Cnty. of Kern, 767 F. Supp. 2d 1069, 1108 (E.D. Cal. 2011)
17
(treating as motions for reconsideration two motions in limine and
18
a motion made at a Rule 51 conference, when plaintiff had
19
previously filed a motion to strike, motion for reconsideration,
20
and a motion for summary judgment on the same issue); Sabra v.
21
Clark, No. C06-1832-RSL-JPD 2007, U.S. Dist. LEXIS 11032, at *2-3
22
(W.D. Wash. January 30, 2007) (treating a second motion for a stay
23
that was filed 22 days after the first one was denied as a motion
24
for reconsideration).
25
generally have discretion to permit a second motion, and will not
26
treat it as a motion for reconsideration.
27
Tonnemacher, 593 F.3d 908, 911 (9th Cir. 2010) (holding that a
28
This is IGC’s second motion to
Although some district courts will treat renewed motions
See Jadwin
However, when new facts develop, courts
5
See Hoffman v.
1
district court does not abuse its discretion when it allows a
2
successive motion for summary judgment that is supported by an
3
expanded factual record).
4
this Court will not analyze the Motion under a motion for
5
reconsideration standard.
In light of the new facts discussed,
6
Finally, j2 states that this case should be transferred,
7
instead of dismissed, but its reasons are not persuasive because it
8
has not shown that dismissal would cause prejudice.
9
IV. Conclusion
10
11
For the reasons stated herein, the Court GRANTS IGC’s Motion.
IT IS SO ORDERED.
12
13
14
Dated: June 27, 2013
DEAN D. PREGERSON
United States District Judge
15
16
17
18
19
20
21
22
23
24
25
26
27
28
6
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?