AAMP of Florida, Inc. v. Audionics System, Inc.

Filing 17

ORDER: Defendant Crux Interfacing Solutions' Motion to Dismiss or, in the Alternative, Transfer 10 is GRANTED IN PART. The Clerk is directed to transfer this action to the United States District Court for the Central District of California. Signed by Judge Virginia M. Hernandez Covington on 3/18/2013. (CH)

UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
TAMPA DIVISION
AAMP OF FLORIDA, INC.,
d/b/a AAMP of America,
Plaintiff,
v.

Case No. 8:12-cv-2922-T-33TGW

AUDIONICS SYSTEM, INC.,
d/b/a Crux Interfacing
Solutions,
Defendant.
_______________________________/
ORDER
Plaintiff

AAMP

of

America

accuses

Defendant

Crux

Interfacing Solutions of patent infringement.

However, ten

days

infringement

before

AAMP

filed

the

instant

patent

action, Crux filed a declaratory judgment action for “noninfringement
States

and

District

California.

invalidity
Court

of

for

patents”

the

(Doc. # 10 at 5).

Central

in

the

United

District

of

Crux now moves this Court

to dismiss the instant patent infringement action or, in
the alternative, to transfer the case to California.
AAMP opposes the Motion

and accuses Crux

declaratory action in bad faith.

Id.

of filing the

(Doc. # 12).

For the

reasons that follow, the Court grants the Motion in part.

I.

Background
Plaintiff AAMP is “the sole owner of all right, title,

and

interest

in”

a

patent

entitled

“Remote

Interface for Replacement Vehicle Stereos.”
2).

Control

(Doc. # 1 at

AAMP alleges that Defendant Crux has infringed the

patent “by making, importing, using, offering to sell, or
selling

without

authority

.

.

.

and/or

practicing

the

claimed interface methods of the [patent] in vehicle stereo
control interface devices for use with factory-installed
steering wheel stereo controls and after-market replacement
stereos . . . .”

Id. at 3.

Additionally, AAMP claims that

Crux’s customers “are directly infringing the [patent] and
its

methods

purchased

by

from

using
Crux,”

.

.

.

and

stereo

that

Crux

interface

devices

encourages

this

infringement by providing “a video on its web site for each
of its infringing products providing detailed directions to
dealers, installers, and customers regarding the use and
installation of the infringing products.”

Id. at 3-4.

Accordingly, on December 27, 2012, AAMP initiated the
present

action,

asserting

a

single

claim

for

patent

infringement against Crux pursuant to 35 U.S.C § 271(b).
Id. at 5.

On January 18, 2013, Crux filed a Motion to

Dismiss or, in the Alternative, Transfer.
2

(Doc. # 10).

Within

that

Motion,

Crux

explains

that

AAMP

initially

accused Crux of infringing AAMP’s patent in August of 2012.
Id. at 5.

Crux, “growing weary of the uncertainty, filed a

declaratory complaint for non-infringement and invalidity
of

AAMP’s

patents

on

December

District of California.”

Id.

17,

2012

in

the

Central

Thus, Crux argues that this

Court should dismiss the instant action, filed ten days
after Crux’s action for declaratory relief, in accordance
with the first-filed rule.
to

transfer

this

case

Id.
to

Alternatively, Crux moves
the

Central

District

California, where the declaratory action is pending.

of

Id.

On February 4, 2013, AAMP filed a response to the
Motion,

arguing

anticipatory,
apply

the

that

and

Crux’s

therefore

first-filed

California

that

rule.

this

(Doc.

#

lawsuit

Court

should

12

7).

at

was
not
AAMP

explains that, far from the alleged “uncertainty” that Crux
claims to have experienced in the months following AAMP’s
initial

notice

of

patent

infringement,

AAMP

“repeatedly

informed Crux that if Crux did not provide a substantive
response [to AAMP’s notices] in short order, AAMP would
file a patent infringement suit against Crux.”
II.

Id. at 8.

Discussion
“Where

two actions involving overlapping issues and
3

parties

are

pending

in

two

federal

courts,

there

is

a

strong presumption across the federal circuits that favors
the forum of the first-filed suit under the first-filed
rule.”

Manuel v. Convergys Corp., 430 F.3d 1132, 1135

(11th Cir. 2005).

In determining whether an exception to

the

rule

first-filed

is

warranted,

one

equitable

consideration is whether a declaratory judgment action was
filed in an apparent attempt to preempt another action by
the opposing party. Serco Serv. Co. v. Kelley Co., 51 F.3d
1037, 1040 (Fed. Cir. 1995).
do

not

rule.

automatically

“However, those circumstances

compel

abandoning

the

first-filed

And even where those conditions are present, ‘the

first-filed action is preferred, even if it is declaratory,
unless considerations of judicial and litigant economy, and
the

just

effective

otherwise.’”

disposition

of

disputes,

require

Allstate Ins. Co. v. Clohessy, 9 F. Supp. 2d

1314, 1316 (M.D. Fla. 1988)

(quoting

Serco,

51 F.3d

at

1039); see also Micron Tech., Inc. v. Mosaid Tech., Inc.,
518

F.3d

897,

904

(Fed.

Cir.

2008)

(“The

general

rule

favors the forum of the first-filed action, whether or not
it is a declaratory judgment action.”); Elec. for Imaging,
Inc. v. Coyle, 394 F.3d 1341, 1348 (Fed. Cir. 2005) (“The
considerations affecting transfer to or dismissal in favor
4

of another forum do not change simply because the first
filed action is a declaratory action.”) (internal quotation
omitted).
In

this

substantial

case,

overlap

Florida actions.

the

parties

exists

do

between

not
the

dispute

that

California

and

Both cases arise out of the same patent

infringement issue.

As Crux explains, “the two cases are

exactly

the

Crux’s

Florida

action

issues.”

same.

involve

California

identical

(Doc. # 10 at 6).

action

parties

and

and

AAMP’s

identical

AAMP argues not that the

actions differ, but rather that Crux’s California action
“was filed in a bad faith effort to deprive AAMP of its
choice of forum.”
This

Court

(Doc. # 12 at 9).
agrees

with

AAMP’s

argument

that

“the

filing of a declaratory judgment action in anticipation of
suit in another forum, as [AAMP] contends occurred in this
case, is an equitable consideration which the Court may
take

into

account

in

determining

whether

compelling

circumstances exist to warrant an exception to the firstfiled rule.”

Marietta Drapery & Window Coverings Co., Inc.

v. N. River Ins. Co., 486 F. Supp. 2d 1366, 1369 (N.D. Ga.
2007) (quoting Manuel, 430 F.3d at 1136). But, whatever
merit

there

may

be

in

AAMP’s
5

contention

that

Crux’s

California

action

falls

within

this

“anticipatory

declaratory judgment” exception to the first filed rule –an issue upon which this Court expresses no opinion –- this
Court finds that such a determination should be reached by
the United States District Court for the Central District
of California.

See id.

“The ‘first to file’ rule not only determines which
court

may

decide

the

merits

of

substantially

similar

issues, but also establishes which court may decide whether
the

second

suit

filed

must

transferred and consolidated.”

be

dismissed,

stayed

or

Id. (quoting Cadle Co. v.

Whataburger of Alice, Inc., 174 F.3d 599, 606 (5th Cir.
1999)); see also Micron Tech., 518 F.3d at 904 (“District
courts,

typically

the

ones

where

declaratory

judgment

actions are filed . . . will have to decide whether to keep
the case or decline to hear it in favor of the other forum,
most

likely

where

the

infringement

action

is

filed.”).

“Courts applying this rule generally agree that the court
in which an action is first filed is the appropriate court
to

determine

whether

subsequently

substantially

similar

issues

filed

should

Drapery, 486 F. Supp. 2d at 1369.

cases

proceed.”

involving
Marietta

Once a court finds a

likelihood of substantial overlap between the two suits,
6

“it [is] no longer up to the court in [the second-filed
suit] to resolve the question of whether both should be
allowed to proceed.”

Mann Mfg., Inc. v. Hortex, Inc., 439

F.2d 403, 408 (5th Cir. 1971).

Rather, “the proper course

of action is for the court to transfer the case to the
first-filed court to determine which case should, in the
interests

of

sound

economy, proceed.”

judicial

administration

and

judicial

Marietta Drapery, 486 F. Supp. 2d at

1370.
As

the

court

Anheuser-Busch,

explained

Inc.,

972

F.

in

Supreme

Supp.

Int’l

604,

606

Corp.

(S.D.

v.

Fla.

1997), even if this Court were inclined to agree with AAMP
that the case should be tried here, “it has no authority to
mandate this result.”

If this Court does not dismiss or

transfer the Florida action, there is no guarantee that the
California

court

would

follow

declaratory judgment action.

suit

and

dismiss

the

“The parties would then be

left with the exact situation that the first-filed rule was
designed

to

prevent

–-

lawsuits

on

identical

proceeding simultaneously in separate courts.”

issues

Id. at 606-

607.
Because the parties do not dispute that the instant
action post-dates the California action, and because this
7

Court finds a likelihood of substantial overlap between the
two cases, the United States District Court for the Central
District of California is the appropriate court to decide
whether AAMP’s Florida action should be allowed to proceed
or whether it should be consolidated with the California
action, as well as all issues regarding jurisdiction and
venue.
28

Therefore, this Court employs its authority under

U.S.C.

district

§

1404(a)

“in

accordingly

which

to
it

transfers

transfer
could

this

this

have

action

to

case

been
the

to

another

brought,”
United

and

States

District Court for the Central District of California.
Accordingly, it is
ORDERED, ADJUDGED, and DECREED:
(1)

Defendant

Crux

Interfacing

Solutions’

Motion

to

Dismiss or, in the Alternative, Transfer (Doc. # 10)
is GRANTED IN PART.
(2)

The Clerk is directed to transfer this action to the
United States District Court for the Central District
of California.
DONE and ORDERED in Chambers in Tampa, Florida, this

18th day of March, 2013.

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Copies: All Counsel of Record

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