Siemens Industry, Inc. v. Westinghouse Air Brake Technologies Corporation et al

Filing 151

MEMORANDUM ORDER re 142 MOTION to Assign a Civil Action Number and Enjoin Defendants from Prosecuting a Second-Filed Action filed by Siemens Industry, Inc. is GRANTED in part and DENIED in part. Signed by Judge Leonard P. Stark on 10/16/17. (ntl)

IN THE UNITED STATES !DISTRICT .COURT
FOR THE DISTRICT OF DELAWARE
SIEMENS INDUSTRY, INC.,
Plaintiff,
v.

WESTINGHOUSE AIR BRAKE
TECHNOLOGIES CORPORATION
(d/b/a WABTEC CORPORATION) and
W ABTEC RAILWAY ELECTRONICS,
INC.,

C.A. No. 16-284-LPS-CJB

Defendants.
MEMORANDUM ORDER
Having reviewed the parties' briefing relating to Plaintiffs motion to assign a civil action
number and enjoin Defendants from prosecuting a second-filed action (D.I. 142), IT IS HEREBY
ORDERED that:
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1.

Plaintiffs motion is GRANTED to the extent that the Clerk of Court is directed to

OPEN a new case in which Plaintiff may, if it wishes, proceed with its declaratory judgment
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counterclaims relating to Defendants' patents. The ¢ourt will determine, at an appropriate time,
after hearing from the parties, whether this new actiqn should be stayed, transferred, dismissed,
or proceed (and, if so, on what schedule).
2.

Plaintiffs motion is DENIED in all other respects, including its request that the

Court enjoin Defendants from proceeding with their pending action in the W estem District of
Pennsylvania.
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While it may have been that the Magistrate Judge, and one or both parties, anticipated
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that when Plaintiff's motion to sever was granted

tha~ Defendants would file a new action in this

District (asserting Defendants' patent claims that were severed from the instant action),
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Defendants were not required to file any new action.] More importantly, nothing in the Court's .
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prior rulings, nor the Federal Rules. of Civil ProcedUFe, compelled Defendants - having decided
to assert their patents in a new action against Plaintiff - to file in this District. The Court
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perceives no meritorious basis to enjoin Defendants from proceeding with their "second-filed"
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action. Notably, Plaintiff persuaded the Magistrate Jrdge that the patent claims Defendants are
asserting against Plaintiff have little if any overlap with the patent claims Plaintiff is asserting
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against Defendants in the instant action.
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However, the Court agrees with Plaintiff thatj Defendants' decision to file a new action in
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the W estem. District does not automatically mean that Plaintiffs declaratory judgment
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counterclaims relating to Defendants' patents must ~ against Plaintiffs wishes - necessarily be ·
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litigated in that District. It may well be sensible to tiansfer Plaintiffs counterclaims to the
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W estem District, but that is a matter the Court will Jecide (should it be asked to do so) in the

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· 1s 1stnqt.
context o.f th e new act10n to b e opened m th. D.
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To the extent not already clear, Defendants' dounterclaims (i.e., Defendants' assertion of
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Defendants' patents against Plaintiff) in the instant aption are DISMISSED WITHOUT
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PREJUDICE to Defendants' proceeding with those ~ame claims in the pending action in the
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W estem District.

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October 16, 2017
Wilmington, Delaware

HONORABLE LEONARD P. STARK
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[TED STATES DISTRICT JUDGE
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