Victaulic Company v. Romar Supply, Incorporated

Filing 36

MEMORANDUM OPINION AND ORDER denying 35 Unopposed Motion for Leave to File a Surreply Brief in Opposition to the Motion to Dismiss; granting in part 25 Motion to Dismiss, or in the Alternative, to Stay or Transfer Plaintiff's Action. Therefore, this case is ORDERED transferred to the United States District Court for the Northern District of Georgia, Atlanta Division. (Ordered by Judge Ed Kinkeade on 11/14/2013) (twd) [Transferred from Texas Northern on 11/15/2013.]

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF TEXAS
DALLAS DIVISION
VICTAULIC COMPANY,
Plaintiff,
v.
ROMAR SUPPLY, INCORPORATED,
Defendant.

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NO. 3:13-CV-02760-K

MEMORANDUM OPINION AND ORDER
Before the Court are Defendant’s Motion to Dismiss, or in the Alternative, to Stay
or Transfer Plaintiff’s Action (“the Motion to Dismiss”) (Doc. No. 25); and Plaintiff’s
Unopposed Motion for Leave to File a Surreply Brief in Opposition to the Motion to
Dismiss (Doc. No. 35). The Court has reviewed the above motions, the briefing, the
materials submitted by the parties, and the applicable law. For the reasons below, the
Court hereby DENIES the Unopposed Motion to File a Surreply Brief (Doc. No. 35);
GRANTS the Motion to Dismiss (Doc. No. 25) in part; and TRANSFERS this case to
the United States District Court for the Northern District of Georgia, Atlanta Division.
I.

Factual Background

Plaintiff Victaulic Company (“Victaulic”) filed its Complaint in the Northern
District of Texas against Romar Supply, Incorporated (“Romar”) on July 17, 2013. At
issue in this case is a product called a SlideLok pipe coupling. The SlideLok pipe
coupling is manufactured by Anvil International, LLC (“Anvil”). It is distributed by
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approximately 75 United States distributors, including Romar. Victaulic claims that a
properly installed SlideLok coupling infringes U.S. Patent Numbers 7,086,131 and
7,712,796 (“the Victaulic Patents”). Victaulic alleges that Romar has induced
infringement of both patents by selling SlideLok pipe couplings.
On September 19, 2013, Romar filed its Answer and the Motion to Dismiss. In
the Motion to Dismiss, Romar argues this case should be dismissed or transferred to the
Northern District of Georgia, Atlanta Division, because a case involving the same
patents, legal claims, and similar parties has been pending in that court since October 3,
2012 (“the Georgia Case”). Complaint and Demand for Trial by Jury, Mueller Water
Prods., Inc. and Anvil Int’l, LLC, v, Victaulic Co., No. 1:12-CV-03446-JEC (N.D. Ga. Oct.
3, 2012), ECF No. 1. The Georgia Case was filed by Anvil and its parent company,
Mueller Water Products, Inc. (“Mueller”) against Victaulic. Anvil and Mueller seek a
declaration that the Victaulic Patents are invalid and not infringed by the SlideLok pipe
couplings. The Georgia Case is not the only forum in which Anvil and Victaulic are
waging war over the Victaulic Patents. Two weeks after the Georgia Case was filed,
Victaulic filed a direct infringement case against Anvil and Mueller in the Eastern
District of Pennsylvania. In July 2013, Victaulic initiated the next stage of its litigation
strategy and filed three customer cases for induced infringement – this case, a case in the
District of Utah, and one in the District of South Carolina. That same month, Victaulic
also filed a Statement of Claim against Anvil and Mueller in Canada to initiate yet
another patent infringement allegation against the SlideLok pipe couplings. Even prior to
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the Georgia Case, the US Patent and Trademark Office began reexamination proceedings
on the Victaulic Patents. The reexamination process is still ongoing. Since the Motion to
Dismiss was filed, the cases in the Eastern District of Pennsylvania and District of Utah
have both been dismissed in deference to the first-filed Georgia Case. Order, Victaulic Co.
v. Anvil Int’l, LLC, No 5:12-CV-05985-SD (E.D. Pa. Oct. 4, 2013), ECF No. 29; Victaulic
Co. v. Scholzen Prods. Co., No. 2:13-CV-00651-DS (D. Utah Oct. 9, 2013), ECF No. 35.
II.

Legal Standard

The first-to-file rule permits a court to refuse to hear a case if the issues raised by
the two cases substantially overlap. See Cadle Co. v. Whataburger of Alice, Inc., 174 F.3d
599, 603 (5th Cir. 1999). The first-to-file rule does not require that the issues or parties
involved in the two cases be identical; rather, the crucial inquiry is whether the issues
involved in the two cases “substantially overlap.” Save Power Ltd. v. Syntek Fin. Corp., 121
F.3d 947, 950 (5th Cir. 1997). Even a potential jurisdictional dispute will not prevent a
court from transferring a case under the first-to-file rule so long as there is substantial
overlap. Cadle Co., 174 F.3d at 605. Courts use the first-to-file rule to maximize judicial
economy and minimize inconsistencies by refusing to hear a case raising issues that
might substantially duplicate the issues raised by a case filed previously and still pending
in another federal court. See id. at 604; West Gulf Maritime Ass'n v. ILA Deep Sea Local 24,
751 F.2d 721, 728 (5th Cir.1985) ("The concern manifestly is to avoid the waste of
duplication, to avoid rulings which may trench upon the authority of sister courts, and to
avoid piecemeal resolution of issues that call for a uniform result."). The first-filed court
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is the appropriate court to determine whether subsequently filed cases with substantial
overlap should proceed or not. Cadle Co., 174 F.3d at 606. Thus, when a district court
finds that the issues substantially overlap, the proper course of action is to transfer the
case to the first-filed court.
III.

Analysis

The parties dispute whether the two cases overlap. Victaulic argues that the firstto-file rule is inapplicable, because the parties in the two cases are not the same. Victaulic
is a party to both this case and the Georgia Case. Romar, however, is not a party to the
Georgia case. This lack of complete identity of the parties is not a bar to application of
the first-to-file rule, so long as the issues in the two cases substantially overlap, as they do
here. See, e.g., Save Power Ltd., 121 F.3d at 950–51 (noting that “the fact that Syntek is
not a party to the Original Action does not undermine the appropriateness of transfer in
view of all the facts of this case.”) Victaulic also argues that the issues in the two cases
are different. However, both cases arises from the same Victaulic Patents and the same
SlideLok pipe coupling. While the Georgia Case involves allegations of direct
infringement and this case alleges induced infringement, at their core, both cases must
decide if the Victaulic Patents were infringed by the SlideLok pipe coupling. Allowing
both cases to proceed presents an opportunity to have significantly conflicting
conclusions on the question of infringement. Because the two cases substantially overlap,
the first-to-file rule applies. It would constitute an unnecessary interference by this Court
into a sister court’s affairs, as well as an unwise use of judicial resources, for this Court
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and the Northern District of Georgia, Atlanta Division to issue potentially inconsistent
rulings.
Having determined that the dispute between these parties is properly heard by the
Northern District of Georgia, Atlanta Division, the question then arises of how best to
proceed with the action before this Court. The Motion to Dismiss requests this Court
either dismiss the case altogether, or transfer the case to the Northern District of
Georgia, Atlanta Division. In the Fifth Circuit, transferring the matter to the court in
which the first-filed case is being adjudicated is the preferred action. See Cadle, 174 F.3d
at 606. In Cadle, the Fifth Circuit stated that "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 be dismissed, stayed or
transferred and consolidated." Id. at 606. Accordingly, once the determination has been
made that another first-filed case should proceed at the expense of a later-filed case, it
then falls to the court adjudicating the first-filed case to determine the fate of the later
case. Id. Thus, the Court concludes that the appropriate action is to transfer this case to
the Northern District of Georgia, Atlanta Division.

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IV.

Conclusion
Victaulic’s Unopposed Motion to File a Surreply Brief (Doc. No. 35) is DENIED.

The Court finds that the first-to-file rule applies, because the issues in the two cases
substantially overlap. Therefore, this case is ORDERED transferred to the United States
District Court for the Northern District of Georgia, Atlanta Division.
SO ORDERED
Signed November 14th, 2013

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ED KINKEADE
UNITED STATES DISTRICT JUDGE

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