Silver Line Building Products LLC v. J-Channel Industries Corporation
Filing
30
ORDER granting 15 Motion to Dismiss. For the reasons set forth herein, the Court grants J-Channel's motion to stay this action. Specifically, the Court stays this action pending resolution of Silver Line's motion to transfer the Tennessee Action to this district, which is pending in the Eastern District of Tennessee. SO ORDERED. Ordered by Judge Joseph F. Bianco on 3/24/2014. (Gibaldi, Michael)
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF NEW YORK
_____________________
No 13-CV-6561 (JFB) (AKT)
_____________________
SILVER LINE BUILDING PRODUCTS LLC,
Plaintiff,
VERSUS
J-CHANNEL INDUSTRIES CORPORATION,
Defendant.
___________________
MEMORANDUM AND ORDER
March 24, 2014
___________________
JOSEPH F. BIANCO, District Judge:
a defendant. On December 23, 2013, Silver
Line moved in the Eastern District of
Tennessee to transfer the Tennessee Action
to this district. That motion remains pending.
On November 26, 2013, Silver Line
Building Products LLC (“Silver Line” or
“plaintiff”) commenced this action against JChannel Industries Corporation (“J-Channel”
or “defendant”), seeking a declaratory
judgment that windows manufactured, sold,
and marketed by Silver Line do not infringe
on United States Reissue Patent No. 40,041
(“the ’041 patent”). This is the second action
filed concerning the alleged infringement of
the ’041 reissue patent by Silver Line
windows. Approximately six weeks before
Silver Line commenced this action against JChannel, on October 9, 2013, J-Channel filed
suit against Silver Line’s parent company,
Andersen Corporation (“Andersen”), in the
Eastern District of Tennessee, alleging that
Silver Line windows infringe on the ’041
patent (the “Tennessee Action”). On
December 9, 2013, J-Channel filed in the
Tennessee Action an amended complaint,
which replaced Andersen with Silver Line as
Presently before this Court is J-Channel’s
motion to dismiss, stay, or transfer this action
to the Eastern District of Tennessee. For the
following reasons, the Court grants JChannel’s motion to stay this action while
Silver Line’s motion to transfer the
Tennessee Action remains pending in the
Eastern District of Tennessee. First, the Court
determines that the Tennessee Action is the
first-filed action under the Federal Circuit’s
first-to-file rule, which “generally favors
pursuing only the first-filed action when
multiple lawsuits involving the same claims
are filed in different jurisdictions.” Merial
Ltd. v. Cipla Ltd., 681 F.3d 1283, 1299 (Fed.
Cir. 2012). As explained infra, it is clear that
the Tennessee Action was filed first, and both
the Tennessee Action and this action involve
the same patent and the same allegedly
1
infringing products. In such circumstances, it
is inconsequential that Silver Line did not
become a party to the Tennessee Action until
after it commenced this action. Second,
having determined that the Tennessee Action
is the first-filed action, the Court considers
the applicability of any exception to the
general rule favoring adjudication in the
forum of the first-filed action. Here, in
particular, Silver Line asserts that the balance
of convenience factors favors this forum over
the Eastern District of Tennessee. Because
the Tennessee Action is the first-filed action,
the Court concludes that the Eastern District
of Tennessee is the more appropriate forum
to determine whether an exception to the
first-to-file rule applies. Accordingly, the
Court stays this action pending a decision on
Silver Line’s pending motion to transfer
venue in the Eastern District of Tennessee.
Home Depot infringed at least one claim of
the ’041 reissue patent by manufacturing and
selling the “Silver Line by Andersen 3000
Series Double-Hung Window” and the
“American Craftsman by Andersen 70
Double Hung Fin Vinyl Window” (id. ¶¶ 14–
15).
J-Channel has filed similar lawsuits in the
Eastern District of Tennessee against other
defendants for infringement of the ’041
reissue patent. Including the Tennessee
Action, there are currently twenty-two
pending cases in the Eastern District of
Tennessee alleging infringement of the ’041
reissue patent. 2 On October 17, 2013,
Magistrate Judge C. Clifford Shirley, Jr. of
the Eastern District of Tennessee found that
these twenty-two cases are related because all
allege infringement of the ’041 reissue
patent, and ordered that all twenty-two cases
be assigned to a single district court judge and
magistrate judge. (See Order, ECF No. 6, JChannel Indus. Corp. v. Home Depot U.S.A.,
Inc., No. 13-CV-606 (E.D. Tenn. Oct. 17,
2013).)
I. BACKGROUND
A. The Tennessee Action
On October 9, 2013, J-Channel filed suit
in the Eastern District of Tennessee against
Andersen and Home Depot U.S.A., Inc.
(“Home Depot”) for infringement of the ’041
patent. (See Compl., J-Channel Indus. Corp.
v. Home Depot U.S.A., Inc., No. 13-CV-606
(E.D. Tenn. Oct. 9, 2013) (“Tenn.
Compl.”).1) Andersen is the parent company
of Silver Line, having acquired Silver Line in
2006. (Decl. of Timothy E. Grochocinski
¶ 10, Jan. 15, 2014.) J-Channel alleged that it
was the assignee of the ’041 reissue patent
(Tenn. Compl. ¶ 12), and that Andersen and
On November 26, 2013, Andersen moved
to dismiss the complaint in the Tennessee
Action. Andersen asserted that Silver Line,
not Andersen, manufactures, markets, and
sells the Silver Line 3000 Series and
American Craftsman 70 Series Windows.
(See Mot. & Mem. of Law, ECF Nos. 15–16,
J-Channel Indus. Corp. v. Home Depot
U.S.A., Inc., No. 13-CV-606 (E.D. Tenn.
Nov. 26, 2013).) On December 9, 2013, after
Andersen filed its motion to dismiss, Jmay take judicial notice of court records”), aff’d, 297
F. App’x 23 (2d Cir. 2008).
2
Nos. 13-CV-471, 13-CV-472, 13-CV-473, 13-CV474, 13-CV-600, 13-CV-601, 13-CV-602, 13-CV603, 13-CV-604, 13-CV-468, 13-CV-605, 13-CV606, 13-CV-607, 13-CV-609, 13-CV-610, 13-CV611, 13-CV-613, 13-CV-614, 13-CV-615, 13-CV616, 13-CV-617, 13-CV-619.
1
The Court takes judicial notice of the Tennessee
Action. See, e.g., Kramer v. Time Warner, Inc., 937
F.2d 767, 774 (2d Cir. 1991) (“[C]ourts routinely take
judicial notice of documents filed in other courts, . . .
not for the truth of the matters asserted in the other
litigation, but rather to establish the fact of such
litigation and related filings.”); Vaughn v. Consumer
Home Mortg. Co., Inc., 470 F. Supp. 2d 248, 256 n.8
(E.D.N.Y. 2007) (“It is . . . well established that courts
2
Channel filed an amended complaint against
Silver Line and Home Depot for
infringement of the ’041 reissue patent.
declaratory judgment action, if filed later,
generally is to be stayed, dismissed, or
transferred to the forum of the infringement
action.” Futurewei Techs., Inc. v. Acacia
Research Corp., 737 F.3d 704, 708 (Fed. Cir.
2013). “Resolution of whether the secondfiled action should proceed presents a
question sufficiently tied to patent law that
the question is governed by [the Federal
Circuit’s] law.” Id. The Federal Circuit
adopted the first-to-file rule for patent cases
in Genentech, Inc. v. Eli Lilly and Co., a
decision in which the Federal Circuit
recognized that the question of whether the
second-filed suit should yield to the first-filed
suit “raises the issue of national uniformity in
patent cases, and invokes the special
obligation of the Federal Circuit to avoid
creating opportunities for dispositive
differences among the regional circuits.” 998
F.2d 931, 937 (Fed. Cir. 1993), overruled on
other grounds, Wilton v. Seven Falls Co., 515
U.S. 277 (1995). “The filing date of an action
derives from the filing of the complaint.”
Merial, 681 F.3d at 1299.
B. The Instant Action
On November 26, 2013—the same day
that Andersen moved to dismiss the
complaint in the Tennessee Action—Silver
Line filed suit against J-Channel in this
Court. Pursuant to the Declaratory Judgment
Act, 28 U.S.C. §§ 2201–2202, Silver Line
seeks a declaration that its windows,
including the Silver Line 3000 Series
Double-Hung Window and the American
Craftsman 70 Double Hung Fin Vinyl
Window, do not infringe any claim of the
’041 reissue patent, and that the ’041 reissue
patent is invalid and unenforceable. (Compl.
¶ 1.)
On January 15, 2014, J-Channel filed a
motion to dismiss, stay, or transfer this action
to the Eastern District of Tennessee. Silver
Line opposed the motion on February 14,
2014, and J-Channel replied on February 28,
2014. The Court heard oral argument on JChannel’s motion on March 12, 2014. The
Court has fully considered the submissions of
the parties.
Although “the forum of the first-filed
case is favored,” Genentech, 998 F.2d at 937,
“exceptions may be made if justified by
‘considerations of judicial and litigant
economy, and the just and effective
disposition of disputes.’” Futurewei Techs.,
737 F.3d at 708 (quoting Elecs. for Imaging,
Inc. v. Coyle, 394 F.3d 1341, 1347 (Fed. Cir.
2005)). These exceptions “are not rare, and
are made when justice or expediency
requires, as in any issue of choice of forum.”
Genentech, 998 F.2d at 937. More recently,
the Federal Circuit has held that a district
court’s decision to depart from the general
rule favoring the first-filed action must take
into account “the convenience factors under
28 U.S.C. § 1404(a).” Micron Tech., Inc. v.
Mosaid Techs., Inc., 518 F.3d 897, 904 (Fed.
Cir. 2008). Such factors include, but are not
limited to, “the convenience and availability
of witnesses, the absence of jurisdiction over
II. DISCUSSION
A. Legal Standard
The Federal Circuit has explained that
“[t]he ‘first-to-file’ rule is a doctrine of
federal comity, intended to avoid conflicting
decisions and promote judicial efficiency,
that generally favors pursuing only the firstfiled action when multiple lawsuits involving
the same claims are filed in different
jurisdictions.” Merial, 681 F.3d at 1299.
Specifically, “[w]hen two actions that
sufficiently overlap are filed in different
federal district courts, one for infringement
and the other for declaratory relief, the
3
all necessary or desirable parties, and the
possibility of consolidation with related
litigation.” Id.; see Genentech, 998 F.2d at
938. Other convenience factors traditionally
considered under 28 U.S.C. § 1404(a)
include the plaintiff’s choice of forum, the
location of relevant documents and relative
ease of access to sources of proof, the
convenience of the parties, the locus of
operative facts, the relative means of the
parties, and the forum’s familiarity with the
governing law. EasyWeb Innovations, LLC v.
Facebook, Inc., 888 F. Supp. 2d 342, 348
(E.D.N.Y. 2012).
that the Tennessee Action, which was filed
first, would be considered the first-filed
action for purposes of the first-to-file rule.
“The Federal Circuit has not expressly
stated a view as to whether, in patent cases,
the first-to-file rule applies only where the
concurrent actions at issue involve identical
parties.” Shire U.S., Inc. v. Johnson Matthey,
Inc., 543 F. Supp. 2d 404, 408 (E.D. Pa.
2008); see Horton Archery, LLC v. Am.
Hunting Innovations, LLC, No. 09-CV-1604,
2010 WL 395572, at *4 (N.D. Ohio Jan. 27,
2010) (noting lack of direct Federal Circuit
authority). Nonetheless, the Federal Circuit
has recently indicated, albeit implicitly, that
the first-to-file rule does not require identical
parties. As noted supra, in its most recent
explanation of the first-to-file rule, the
Federal Circuit held that the first-to-file rule
applies “[w]hen two actions that sufficiently
overlap are filed in different federal district
courts, one for infringement and the other for
declaratory relief.” Futurewei Techs., 737
F.3d at 708 (emphasis added). The Federal
Circuit did not state that identical parties are
required for the first-to-file rule to apply.
Similarly, the Federal Circuit has held that
the first-to-file rule “generally favors
pursuing only the first-filed action when
multiple lawsuits involving the same claims
are filed in different jurisdictions.” Merial,
681 F.3d at 1299 (emphasis added). Again,
the Federal Circuit did not hold that the rule
requires identical parties in the concurrent
actions.3
B. Application
1. First-Filed Action
First, J-Channel and Silver Line dispute
whether the Tennessee Action or this action
is the first-filed action for purposes of the
first-to-file rule. Of course, neither party
disputes the obvious: the Tennessee Action
was filed first. However, the parties disagree
over whether the Tennessee Action qualifies
as the first-filed action where Silver Line did
not become a party to the Tennessee Action
until after this action was filed. To resolve
this dispute, the Court must decide whether
the first-to-file rule applies only when there
are identical parties in concurrent actions. If
identical parties are required, as Silver Line
contends, then this action would be the firstfiled because this Court was the first court to
acquire jurisdiction over both J-Channel and
Silver Line. As noted supra, J-Channel added
Silver Line as a defendant to the Tennessee
Action after this action was filed. However.
if identical parties are not required, as JChannel maintains, then this Court must
assess whether this action and the Tennessee
Action otherwise sufficiently overlap, such
Moreover, to the extent that the Federal
Circuit has been ambiguous on the matter,
district courts confronted with this issue have
consistently “found no requirement that the
parties in the concurrent actions be the same
542 F. App’x 998, 999 (Fed. Cir. 2013); however, that
decision does not hold that the first-to-file rule applies
only when the parties to the two actions are identical.
3
The Federal Circuit has also noted recently that the
first-to-file rule applies “when a complaint involving
the same parties and issues has already been filed in
another district,” In re Foundations Worldwide, Inc.,
4
in order for the first-to-file rule to apply.”
Shire U.S., 543 F. Supp. 2d at 408; see, e.g.,
Proctor & Gamble Co. v. Team Techs., Inc.,
No. 12-CV-552, 2012 WL 5903126, at *2
(S.D. Ohio Nov. 26, 2012); Interactive
Fitness Holdings, LLC, v. Icon Health &
Fitness, Inc., No. 10-CV-04628-LHK, 2011
WL 1302633, at *3 (N.D. Cal. Apr. 5, 2011);
Horton Archery, 2010 WL 395572, at *4–5.
Instead, those decisions examine whether
two concurrent actions “involve the same
patent and the same allegedly infringing
product,” and then determine which of those
two actions was filed first. Shire U.S., 543 F.
Supp. 2d at 409.
Texas action was filed before
Pennsylvania action. Id. at 409.
the
The Court finds the reasoning in Shire to
be persuasive, particularly in light of the
more recent Federal Circuit cases that have
emphasized whether two concurrent actions
“sufficiently overlap,” Futurewei Techs., 737
F.3d at 708, or “involve[e] the same claims,”
Merial, 681 F.3d at 1299. Moreover, as the
Shire decision noted, “[a] rigid requirement
that there be identical parties in the actions at
issue would be at odds with the [first-to-file]
rule’s flexible nature, which the Federal
Circuit has emphasized.” Shire U.S., 543 F.
Supp. 2d at 409 (citing Genentech, 998 F.2d
at 937–38). Finally, the approach taken in
Shire and by other district courts in patent
cases is consistent with the application of the
first-to-file rule in many non-patent cases.
See, e.g., Meeropol v. Nizer, 505 F.2d 232,
235 (2d Cir. 1974) (noting that the first-tofile rule “is applicable even where the parties
in the two actions are not identical”); WylerWittenberg v. MetLife Home Loans, Inc., 899
F. Supp. 2d 235, 244 (E.D.N.Y. 2012)
(“Importantly, application of the [first-tofile] rule does not require identical parties in
the cases, but merely requires substantial
overlap.” (emphasis in original) (internal
citations and quotation marks omitted));
accord Save Power Ltd. v. Syntek Fin. Corp.,
121 F.3d 947, 950 (5th Cir. 1997) (noting that
the first-to-file rule requires “substantial
overlap” but “does not . . . require that cases
be identical”).4
For example, in Shire, Johnson Matthey,
Inc. and Johnson Matthey PLC (collectively,
“Johnson Matthey”) had filed a complaint
against Noven Pharmaceuticals, Inc. in the
Eastern District of Texas, claiming patent
infringement. 543 F. Supp. 2d at 406. Shire
U.S., Inc. and Shire Pharmaceuticals Ireland
Limited (collectively, “Shire”) subsequently
filed suit against Johnson Matthey in the
Eastern District of Pennsylvania, seeking a
declaration that Shire did not infringe on the
patent at issue in the Texas action. Id.
Thereafter, Johnson Matthey amended its
complaint in the Texas action to add Shire as
a defendant. Id. The Eastern District of
Pennsylvania held that the Texas action was
the first-filed, even though Shire was not
originally a party to the Texas action, because
both the Texas action and the Pennsylvania
action involved “the same patent and the
same allegedly infringing product,” and the
4
Silver Line cites a Ninth Circuit case for the
proposition that the parties in the two actions must be
identical for the first-to-file rule to apply. See Alltrade,
Inc. v. Uniweld Prods., Inc., 946 F.2d 622, 628 n.13
(9th Cir. 1991) (“Of course, if the issues or parties
involved in the two suits were not the same, adherence
to the first-to-file rule would be reversible error for it
would constitute a misapplication of the law.”
(emphasis removed)). (See Pl.’s Opp. at 4.) However,
in a subsequent, unpublished opinion, the Ninth
Circuit stated both that the two actions must involve
“the same parties and the issues,” but also that “[t]he
parties and issues do not need to be exactly identical.”
Audio Entm’t Network, Inc. v. Am. Tel. & Tel. Co., 205
F.3d 1350 (Table), 1999 WL 1269329, at *1 (9th Cir.
1999).
5
Applying the foregoing principles to the
case at bar, the Court concludes that the
Tennessee Action is the first-filed action.
Even before Silver Line became a party to the
Tennessee Action, the Tennessee Action and
this action involved the same patent and the
same allegedly infringing products. See, e.g.,
Shire U.S., 543 F. Supp. 2d at 409. Moreover,
even though Silver Line was not a party to the
Tennessee Action at the outset, its parent
corporation was. In these circumstances, the
Court concludes that the two actions
sufficiently overlapped even before the
addition of Silver Line as a party to the
Tennessee Action. See Futurewei Techs., 737
F.3d at 708. Because the complaint in the
Tennessee Action was filed over six weeks
before the filing of the complaint in this
action, the Tennessee Action is the first-filed
action under Federal Circuit law.5, 6
Tennessee over this district. Most
significantly in this Court’s view, there are
twenty-one other cases pending in the
Eastern District of Tennessee concerning
infringement of the ’041 reissue patent, all of
which are before one district court judge and
one magistrate judge. See, e.g., In re EMC
Corp., 501 F. App’x 973, 976 (Fed. Cir.
2013) (“[W]e have held that a district court’s
experience with a patent in prior litigation
and the co-pendency of cases involving the
same patent are permissible considerations in
ruling on a motion to transfer venue.” (citing
In re Vistaprint, Ltd., 628 F.3d 1342, 1346–
47 & n. 3 (Fed. Cir. 2010))). Moreover, travel
to this district would burden two potential
witnesses identified by J-Channel: Kendall
Sayers and Leland Sayers. Kendall Sayers,
the owner of the ’041 reissue patent through
his company JPat LLC, lives in the Eastern
District of Tennessee and declares that it
would be a significant burden on himself and
his family to travel to this district. (Decl. of
Kendall Sayers ¶¶ 2, 8, Jan. 14, 2014.) Leland
Sayers, the inventor of the ’041 reissue patent
and Kendall Sayers’s father, lives in Florida
but routinely travels to the Eastern District of
Tennessee to visit family, and he declares
that he does not know if he would be able to
travel to this district.7 (Decl. of Leland Sayers
¶¶ 2, 5–6.) All witnesses identified by Silver
Line are located in New Jersey (see Decl. of
Andy Karr ¶¶ 11, 15, 18–22, Feb. 13, 2014),
and, therefore, those witnesses would bear
2. Convenience Factors
Having determined that the Tennessee
Action is the first-filed action, the Court turns
to whether an exception to the first-to-file
rule applies. See, e.g., Futurewei Techs., 737
F.3d at 708. In this regard, Silver Line
contends that the balance of convenience
factors identified by the Federal Circuit
favors this forum over the Eastern District of
Tennessee.
The Court notes that several convenience
factors actually favor the Eastern District of
5
In other words, because the first-to-file rule does not
require identical parties to both actions, even if Silver
Line had never been added as a party to the Tennessee
Action, this Court would have held that the first-to-file
rule applied, and would have recognized the
Tennessee Action as the first-filed. The fact that Silver
Line was, in fact, subsequently added to the Tennessee
Action is thus inconsequential.
6
Because the Court decides that the Tennessee Action
is the first-filed on the grounds that it sufficiently
overlaps with the instant action, the Court need not
reach J-Channel’s alternative argument that its
addition of Silver Line as a defendant in the Tennessee
Action should relate back to the filing of the original
complaint.
7
Florida is more than 100 miles from this district and
the Eastern District of Tennessee (see Decl. of
Timothy E. Grochocinski ¶ 4 & Ex. 5, Jan. 15, 2014),
and Rules 45(b)(2) and 45(c)(3)(A)(ii) of the Federal
Rules of Civil Procedure prohibit a subpoena from
directing a witness to travel more than 100 miles.
Accordingly, neither this court nor the Eastern District
of Tennessee could compel Leland Sayers to testify at
trial.
6
the burden of traveling to a different judicial
district whether litigation occurs in this
district or in the Eastern District of
Tennessee. Thus, the convenience of
witnesses appears to favor the Eastern
District of Tennessee as a forum. See, e.g.,
Neil Bros. Ltd. v. World Wide Lines, Inc., 425
F. Supp. 2d 325, 330 (E.D.N.Y. 2006)
(holding that the convenience of witnesses
favored transfer from New York to
Tennessee, where transfer would relieve
certain witnesses from any travel, and other
witnesses would have to travel whether
litigation occurred in New York or
Tennessee). Other factors, such as the
location of relevant documents, the locus of
operative facts,8 and each forum’s familiarity
with governing law, are more neutral. See,
e.g., EasyWeb Innovations, 888 F. Supp. 2d
at 352 (location of documents is largely
neutral “given the technological age in which
we live, with the widespread use of, among
other
things,
electronic
document
production”), 354 (locus of operative facts is
a neutral factor where patent-in-suit was
developed in one district, and the allegedly
infringing product was designed, developed,
and produced in the other district); Neil Bros.,
425 F. Supp. 2d at 333 (“Where, as here, the
law to be applied is federal patent law, the
factor is neutral.”).
forum should decide which forum is
appropriate.” EMC Corp. v. Parallel Iron,
LLC, 914 F. Supp. 2d 125, 129 (D. Mass.
2012) [hereinafter Parallel Iron] (applying
Federal Circuit law) (emphasis in original);
see, e.g., Cellectis S.A. v. Precision
Biosciences, Inc., 881 F. Supp. 2d 609, 613
(D. Del. 2012) (concluding that first-filed
forum should “determine whether exceptions
to the first-filed rule apply”); EMC Corp. v.
Bright Response, LLC, No. C-12-2841-EMC,
2012 WL 4097707, at *5 (N.D. Cal. Sept. 17,
2012) [hereinafter Bright Response]
(applying Federal Circuit law, concluding
that “resolution of whether any exceptions
should trump the rule is best determined by
the [court in which the first action was
filed]”); Mycone Dental Supply Co., Inc. v.
Creative Nail Design, Inc., Civil Action No.
11-4380 (JBS/KMW), 2012 WL 1495496, at
*1 (D.N.J. Apr. 26, 2012) (in patent case,
concluding that “[t]he same considerations of
comity and efficiency that animate the Firstfiled Rule also dictate that the court in which
the matter was first-filed should be the forum
to determine which court is the more
appropriate forum to ultimately adjudicate
the merits of this matter”); Drew Techs., Inc.
v. Robert Bosch, L.L.C., No. 11-15068, 2012
WL 314049, at *6 (E.D. Mich. Jan. 31, 2012)
(“[T]he determination of the appropriate
venue for this dispute should not be made in
this court. Rather, that decision should be left
to the Central District of California as the
first-filed court.”); Genentech, Inc. v.
GlaxoSmithKline LLC, No. 10-CV-04255JF, 2010 WL 4923954, at *4 (N.D. Cal. Dec.
1, 2010) [hereinafter GlaxoSmithKline]
(holding that “the court with jurisdiction over
the first-filed action should weigh the
However, the Eastern District of
Tennessee, and not this Court, is the
appropriate forum to balance all relevant
convenience factors and determine whether
they warrant departure from the first-to-file
rule’s presumption favoring the forum of the
first-filed action. “The first-to-file rule has
generally been interpreted to dictate not only
which forum is appropriate, but also which
The ’041 reissue patent was developed in Knoxville,
Tennessee. (Decl. of Leland Sayers ¶¶ 3–4, Jan. 14,
2014.) The allegedly infringing windows were
designed and developed in Silver Line’s North
Brunswick, New Jersey facility; the windows at issue
are manufactured in New Jersey and Ohio; and the
8
windows are sold in the Northeast and Mid-Atlantic,
New York being the biggest market. (Decl. of Andy
Karr ¶¶ 9–10, 12, 16, Feb. 13, 2014.)
7
convenience factors in the first instance”). 9
Many courts follow the same approach in
non-patent cases. See, e.g., Parallel Iron, 914
F. Supp. 2d at 129 (“Courts in nearly every
circuit have held that the court in which the
second action was filed should defer to courts
in the first-filed action.”) (collecting cases);
Bank of Am., N.A. v. Sorensen, No. 12-CV1026 (TS), 2013 WL 5295677, at *2 (D. Utah
Sept. 19, 2013) (“Other courts have stayed
second-filed declaratory judgment actions
and declined to consider contentions that it
would be more convenient to litigate a case
in a second-filed forum pending ruling on
those issues in the first-filed forum.”);
Reliance Ins. Co. v. Six Star, Inc., 155 F.
Supp. 2d 49, 54 n.2 (S.D.N.Y. 2001) (“The
court in which the first-filed case was brought
decides whether the first-filed rule or an
exception to the first-filed rule applies.”); see
also Congregation Shearith Israel v.
Congregation Jeshuat Israel, --- F. Supp. 2d
----, No. 12-CV-8406 (MGC), 2014 WL
349496, at *2 (S.D.N.Y. Jan. 31, 2014)
(noting Southern District of New York’s
“bright-line rule” that the first-filed forum
decides whether exception to first-to-file rule
applies).
grab” the first-filed action. Id.; see, e.g., AEP
Energy Servs. Gas Holding Co. v. Bank of
Am., N.A., 626 F.3d 699, 720 (2d Cir. 2010)
(noting that § 1404(a) does not “allow for an
action to be transferred by another district
court before whom the action is not then
pending”); Nat’l Equip. Rental, Ltd. v.
Fowler, 287 F.2d 43, 46–47 (2d Cir. 1961)
(“The administration of justice would be
chaotic indeed if one district court could
order another to divest itself of jurisdiction
and to transfer a case properly before it.”).
Instead, the first-filed court would have to
decide for itself whether to transfer the firstfiled action to the second-filed court, which
would require “an entirely duplicative round
of briefing by the parties and analysis by the
court.” Parallel Iron, 914 F. Supp. 2d at 130;
see also GlaxoSmithKline, 2010 WL
4923954, at *4 (“[J]ust as the administration
of justice would be chaotic indeed if one
district court could order another pursuant to
§ 1404(a) to divest itself of jurisdiction and
to transfer a case properly before it, the same
risk is present where the court in a secondfiled action considers the convenience factors
in connection with a motion to dismiss
pursuant to the first-to-file rule.” (internal
quotation marks, brackets, and citations
omitted)).
This principle of deferring to the firstfiled forum comports “with the basic
principles of promoting judicial efficiency
and avoiding duplicative litigation that
underlie the first-to-file doctrine.” Parallel
Iron, 914 F. Supp. 2d at 130. As the District
of Massachusetts has noted, if the secondfiled court were to determine that an
exception to the first-to-file rule applied, “it
would have no authority to reach out and
Turning to the instant case, the Court has
determined supra that the Tennessee Action
is the first-filed action. Accordingly, the
Court defers to the Eastern District of
Tennessee for a determination of whether the
convenience factors under 28 U.S.C.
§ 1404(a) warrant departure from the first-tofile rule. Significantly, the Court notes that a
9
As noted supra, the Federal Circuit held in Micron
that a court considering exceptions to the first-to-file
rule must weigh the convenience factors under 28
U.S.C. § 1404(a). See 518 F.3d at 904. “However,
Micron says nothing about which court should make
that determination. Because Micron’s holding was
directed to the court hearing the first-filed action, the
Federal Circuit did not consider the instant situation,
in which the court in the second-filed action is asked
to weigh the convenience factors.” GlaxoSmithKline,
2010 WL 4923954, at *4; see Parallel Iron, 914 F.
Supp. 2d at 129 (“This Court believes that the Federal
Circuit’s decision [in Micron] is best understood as
controlling how a first-filed court should apply the
first-to-file rule, not which court is best positioned to
conduct that analysis.”).
8
motion to transfer “is already fully briefed
and pending before the [first-filed court]; for
this Court to issue a ruling would risk
inconsistent results, exactly the outcome to
be avoided by the rule in the first place.”
Bright Response, 2012 WL 4097707, at *3.
Because the Court defers to the Eastern
District of Tennessee, the Court stays this
action pending the Eastern District of
Tennessee’s decision on Silver Line’s motion
to transfer the Tennessee Action. See, e.g.,
Parallel Iron, 914 F. Supp. 2d at 130 (staying
second-filed action pending decision by firstfiled court on any challenges to venue);
Cellectis S.A., 881 F. Supp. 2d at 613 (same);
Bright Response, 2012 WL 4097707, at *5
(same); Mycone Dental Supply Co., Inc.,
2012 WL 1495496, at *2 (same);
GlaxoSmithKline, 2010 WL 4923954, at *4
(same).
Lexington Avenue, Suite 3400, New York,
NY 10022. J-Channel is represented by
Timothy Grochocinski and Joseph P.
Oldaker, InnovaLaw, PC, 1900 Ravinia
Place, Orland Park, IL 60462, and Gregory
O. Koerner, Koerner Law Firm, 111 John
Street, Suite 230, New York, NY 10038.
IV. CONCLUSION
For the reasons set forth herein, the Court
grants J-Channels’ motion to stay this action.
Specifically, the Court stays this action
pending resolution of Silver Line’s motion to
transfer the Tennessee Action to this district,
which is pending in the Eastern District of
Tennessee.
SO ORDERED.
_______________________
JOSEPH F. BIANCO
United States District Judge
Dated: March 24, 2014
Central Islip, NY
***
Silver Line is represented by Annie
Huang, Becky Thorson, and Ronald J.
Schutz, Robins, Kaplan, Miller & Ciresi, 601
9
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?