Juniper Networks, Inc. v. Mosaid Technologies Inc.

Filing 29

ORDER by Judge Hamilton Granting 8 Motion to Transfer (pjhlc2, COURT STAFF) (Filed on 3/26/2012)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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JUNIPER NETWORKS, INC.,
Plaintiff(s),

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v.

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No. C 11-6264 PJH
ORDER GRANTING MOTION
TO TRANSFER; VACATING HEARING

MOSAID TECHNOLOGIES INC.,
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For the Northern District of California

United States District Court

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Defendant(s).
_______________________________/

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Before the court is the motion of defendant MOSAID Technologies, Inc. (“MOSAID”)
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to dismiss the complaint of plaintiff Juniper Networks, Inc.’s (“Juniper”), or in the alternative
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to transfer it to the District of Delaware. Because a hearing would not be helpful to the
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court, the March 28, 2012 date for hearing is VACATED, and the court rules on the motion
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as follows.
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According to the complaint, Juniper is in the “business of network innovation,”
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MOSAID is an intellectual property company whose business consists of licensing
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“patented semiconductor and wireless/wireline communications IP” and developing
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“innovative semiconductor memory technology.” See Complaint, ¶ 6. MOSAID “purchases
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and/or invests in patents with the goal of licensing or enforcing those patents against other
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companies and collecting royalties.” Id.
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Juniper’s principal place of business is in Sunnyvale, California. Id. at ¶ 1.
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MOSAID’s principal places of business are in Ottawa, Ontario and in Plano, Texas. Id. at ¶
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2.
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Juniper seeks declaratory relief of non-infringement in response to a dispute
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between itself and MOSAID, in which MOSAID contends that Juniper has infringed three of

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its patents: (1) U.S. Patent No. 5,892,914 (“the 914 Patent”), entitled “System for Accessing

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Distributed Data Cache at Each Network Node to Pass Data Requests and Data;” (2) U.S.

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Patent No. 5,611,049 (“the 049 Patent”), entitled “System for Accessing Distributed Data

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Cache Channel at Each Network Node to Pass Requests and Data;” and (3) U.S. Patent

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No. 6,205,475 (“the 475 Patent”), entitled “Request Interceptor in Network Nodes for

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Determining Local Storage of File Image Satisfying Predetermined Criteria. Id. at ¶¶ 2-3, 7-

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9. Specifically, MOSAID claims that Juniper has allegedly infringed the 914 Patent and the

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049 Patent by testing and demonstrating its “Media Flow Solution” and “Media Flow

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Controllers.” Id. at ¶¶ 11, 17. As for the 475 patent, Juniper has allegedly infringed it by
“making, using, importing, selling and/or offering for sale [] data storage devices,” including

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For the Northern District of California

United States District Court

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the Media Flow Solution and Media Flow Controllers. Id. at ¶ 23.

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Juniper contends that it has not infringed any valid claim of the patents and that the

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patents are invalid for failing to satisfy the conditions of patentability and/or the

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requirements of 35 U.S.C. §§ 101, 102, 103, and/or 112. Id. at ¶¶ 12-13, 18-19, 24-25.

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On August 9, 2011, MOSAID filed a patent infringement suit against Juniper, along

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with other parties, in the District of Delaware (“the Delaware Action”). See Opposition at

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6:4-6; MOSAID’s Motion to Dismiss at 2:21-24. The Delaware Action is entitled MOSAID

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Technologies, Inc. v. Adobe Systems, Inc., et al. (No. CV11-00698-GMS).

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On October 6, 2011, MOSAID filed a First Amended Complaint ("FAC") in the

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Delaware Action, asserting that Juniper’s Media Flow Controllers infringe the ‘914 Patent.

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And on December 7, 2011, MOSAID filed a Motion for Leave to file a Second Amended

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Complaint ("SAC") to allege that Juniper’s Media Flow Controllers infringe, in addition, the

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‘049 Patent and the ‘475 Patent. This motion was opposed by Juniper and the other

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defendants and is currently pending.

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On December 13, 2011, Juniper filed the instant complaint in the Northern District of

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California, seeking declaratory judgment that it is not infringing the three patents that are

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the subject of the Delaware Action and that the three patents are invalid.

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Now before the court is MOSAID’s motion to dismiss for lack of personal jurisdiction

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or in the alternative, transfer the case to the District of Delaware pursuant to the first-to-file

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rule. Because the court finds that the first to file rule is dispositive and that the motion to

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dismiss presents a much closer call, the court addresses only the motion to transfer.

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The first-to-file rule "permits a district court to decline jurisdiction over an action

district." Pacesetter Sys., Inc. v. Medtronic, Inc., 678 F.2d 93, 94-95 (9th Cir. 1982). In

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determining whether to apply the first-to-file rule, a court must consider three factors: (1)

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the chronology of the two actions; (2) the similarity of the parties; and (3) the similarity of

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the issues. See Z-Line Designs, Inc. v. Bell’O Int’l LLC, 218 F.R.D. 663, 665 (N.D. Cal.

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For the Northern District of California

when a complaint involving the same parties and issues has already been filed in another

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United States District Court

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2003). If the first-to-file rule applies, the court in which the second suit was filed may

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transfer, stay or dismiss the proceeding in order to allow the court in which the first suit was

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filed to decide whether to try the case. Alltrade, Inc. v. Uniweld Products, Inc., 946 F.2d

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622, 622 (9th Cir. 1991). An exception to the first-to-file rule arises when “the balance of

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convenience weighs in favor of the later-filed action.” See Ward v. Follett Corp., 158 F.R.D.

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645, 648 (N.D. Cal. 1994); Genentech, Inc. v. GlaxoSmithKline LLC, 2010 WL 4923594 at

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*2 (N.D. Cal., Dec. 1, 2010) (exception analogous to the “convenience of parties and

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witnesses” under a transfer of venue motion, 28 U.S.C. § 1404(a)). However, it is the court

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with the first-filed action that should normally weigh the balance of convenience and any

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other factors that might create an exception to the first-to-file rule. See Alltrade, Inc., 946

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F.2d at 628.

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Here, the instant case satisfies all three factors of the first-to-file rule. First, the

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Delaware Action was filed approximately four months before the present action was filed in

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this court. MOSAID initiated the Delaware Action on August 9, 2011 by filing a complaint in

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the District of Delaware. On December 13, 2011, Juniper filed the instant action in this

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District. Second, the parties are not just substantially similar – they are identical, as both

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Juniper and MOSAID are parties to both actions. Although the Delaware Action involves

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five additional defendants, these additional defendants do not alter the fact that Juniper and

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MOSAID are parties to both the Delaware Action and the instant action. Third, the issues

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are similar because the three patents at issue in the present case are also at issue in the

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Delaware Action. Juniper contends that two of the patents at issue, the ‘049 Patent and the

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‘475 Patent, are not yet at issue in the Delaware Action because they were added by

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MOSAID’s motion for leave to file a SAC, which is still pending. However, Juniper does not

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allege any reasons why, given the youth of the Delaware Action, the Delaware district court

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would not grant leave to amend, nor does it describe how a granting of the motion would

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prejudice Juniper. Moreover, MOSAID alleges that all three patents “cover the same
technology [and] share a common specification,” and that all three patents are infringed by

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For the Northern District of California

United States District Court

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the same accused products owned by Juniper. In sum, all the elements for application of

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the first-to-file rule are satisfied, and the Delaware Action is clearly the first-filed action.

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Insofar as Juniper contends that the balance of convenience factors weighs in favor

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of departing from the application of the first-to-file rule, the court finds that this

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determination should be made by the Delaware court, as the court in which the first action

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was filed.

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Accordingly, the court GRANTS the motion to transfer this action to the District of
Delaware.
IT IS SO ORDERED.
Dated: March 26, 2012
______________________________
PHYLLIS J. HAMILTON
United States District Judge

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