Arr-Maz Products, L.P. v. Shilling Construction Company, Inc.

Filing 36

OPINION AND ORDER by Judge Claire V Eagan ; denying 29 Motion to Stay; denying 10 Motion to Dismiss; denying 10 Motion to Transfer Case to Other District; denying 20 Motion for Miscellaneous Relief (djh, Dpty Clk)

UNITED STATES DISTRICT COURT FOR THE
NORTHERN DISTRICT OF OKLAHOMA

ARR-MAZ PRODUCTS, L.P.,
Plaintiff,
v.
SHILLING CONSTRUCTION COMPANY,
INC.,
Defendant.

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Case No. 12-CV-0319-CVE-FHM

OPINION AND ORDER
Now before the Court are the following motions: Defendant Shilling Construction Company,
Inc.’s Motion to Dismiss or, in the Alternative, to Transfer to the United States District Court for
the District of Kansas (Dkt. # 10); Plaintiff’s Motion to Enjoin Defendant from Prosecuting SecondFiled Action Involving the Same Parties and the Same Subject (Dkt. # 20); and defendant’s motion
to stay (Dkt. # 29). Defendant Shilling Construction Company, Inc. (Shilling) argues that it is not
subject to personal jurisdiction in Oklahoma and, even if it is, this case should be transferred to the
District of Kansas for the convenience of the parties and witnesses. Dkt. # 10. Shilling also asserts
that this case should be stayed because the same patent infringement issues are also being litigated
in an earlier-filed case in the Eastern District of Tennessee. Dkt. # 28, at 2. Plaintiff Arr-Maz
Products, L.P. (Arr-Maz) asks the Court to deny Shilling’s motions and to enjoin Shilling from
attempting to litigate the same issues in a subsequently-filed case in the District of Kansas. Dkt. #
20.

I.
Arr-Maz is a limited partnership organized under the laws of Delaware, and it maintains its
principal place of business in Florida. Dkt. # 2, at 1. Arr-Maz has a Road Science division that is
responsible for developing and marketing asphalt and paving technologies, and the Road Science
division is based in Tulsa, Oklahoma. Dkt. # 19-6, at 3. Arr-Maz employs approximately 30 people
in its Tulsa office. Shilling is a Kansas corporation providing asphalt paving services, and it has its
principal place of business in Kansas. Dkt. # 2, at 1. Shilling’s part owner, Mike Shilling, states
that Shilling performs 95 percent of its business in Kansas. Dkt. # 10-1, at 1. However, Shilling
admits that it has worked on at least one road construction project in Latimer County, Oklahoma.
Id. at 2. Arr-Maz has also produced evidence that Shilling has bid on at least six other projects for
the Oklahoma Department of Transportation and/or the Oklahoma Turnpike Authority in 2012,
including one project in Creek County, Oklahoma during June or July 2012. Dkt. # 19-2, at 3-4.
On June 4, 2012, Arr-Maz filed this case seeking monetary damages and injunctive relief for
Shilling’s alleged patent infringement. The patent at issue, United States Patent No. 7,802,941 (’941
Patent)1 is entitled “Rut Resistant Coating and Method of Applying Rut Resistant Coating.” Dkt.
# 2, at 5. The ’941 Patent was issued to Road Science, LLC n/k/a RE2CON, LLC (RE2CON).2 Arr-

1

Patent attorneys are fond of using a backwards apostrophe when omitting all but the final
three numbers of a patent. According to The Bluebook (19th ed. 2010) and basic rules of
grammar, this is incorrect and an ordinary apostrophe should be used for the short-form
citation of a patent. An apostrophe is defined as a punctuation mark that serves the purpose
of showing that preceding letters or numbers have been omitted, and this is the correct
punctuation to show that certain numbers have been omitted when short-citing a patent. See
id. at 220.

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Road Science, LLC changed its name to RE2CON, and Arr-Maz states that Road Science,
LLC n/k/a RE2CON is a separate and distinct entity from Arr-Maz’s Road Science division.
Dkt. # 19-6, at 3 n.1
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Maz states that, on August 25, 2011, it entered an Asset Purchase Agreement with RE2CON, and
Arr-Maz acquired all rights, title and interest in the ’941 Patent, including the “right to sue for and
recover any damages for past, present or future infringement of the [’]941 Patent.” Id. at 2; Dkt. #
19-6, at 3. Arr-Maz alleges that Shilling “has made, used, offered for sale and sold products and
methods claimed and protected by the [’]941 Patent or that are substantially equivalent to the
claimed products.” Dkt. # 2, at 3. Shilling allegedly turned down an opportunity to obtain a license
from Arr-Maz to use products or methods claimed or protected by the ’941 Patent. Id. at 2. The
complaint identifies asphalt paving construction projects in Oklahoma, Kansas, and Missouri in
which Shilling allegedly used products or methods infringing on ’941 Patent.
On June 5, 2012, Arr-Maz’s attorney, Robert Fitz-Patrick, e-mailed a copy of the complaint
to Shilling’s attorney, Phillip Gragson, and asked if Gragson was authorized to accept service of the
complaint on behalf of Shilling. Dkt. # 20-2. Gragson responded that he would “get back” with
Fitz-Patrick after he had spoken to his client, but he stated that the complaint was missing a couple
of pages and he asked Fitz-Patrick to send another copy of the complaint. Dkt. # 20-6. On June 8,
2012, Fitz-Patrick sent another copy of the complaint to Gragson. Dkt. # 20-7. By June 14, 2012,
Fitz-Patrick had not received a response from Gragson as to whether Gragson would accept service
of the summons and complaint for Shilling. John Heil, another attorney for Arr-Maz, sent an e-mail
to Gragson asking if Gragson intended to accept service. Dkt. # 20-9. Gragson responded on June
19, 2012 that he would talk to his client and respond later that day. Id. On June 21, 2012, Gragson
advised Heil and Fitz-Patrick that he was not authorized by Shilling to accept service.
However, unknown to Arr-Maz’s attorneys, Shilling filed a separate lawsuit in the United
States District Court for the District of Kansas on June 12, 2012. Shilling Construction Company

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v. Arr-Maz Products, L.P., 12-CV-4077-JTM-JPO (D. Kan.) (Kansas case). In the Kansas case,
Shilling sought a declaratory judgment that it had not infringed the ’941 Patent and that the ’941
Patent is invalid. Dkt. # 20-12. Shilling served Arr-Maz by process server on June 13, 2012. Dkt.
# 28-7. Gragson was aware of the Kansas case when he was communicating with Fitz-Patrick and
Heil, because Gragson is the attorney who signed the complaint in the Kansas case. Dkt. # 20-12,
at 6.
There is also a third lawsuit involving the validity of the ’941 Patent. In December 2010,
Roadtec, Inc. (Roadtec) filed a lawsuit against Road Science, LLC (Road Science), in the United
States District Court for the Eastern District of Tennessee, inter alia, challenging the validity and
enforceability of the ’941 Patent. Roadtec, Inc. v. Road Science, LLC, 10-CV-338 (E.D. Tenn.)
(Tennessee case). However, Roadtec is not arguing that the ’941 Patent is facially invalid. Instead,
Roadtec argues that Road Science’s marketing tactics are interfering with Roadtec’s right to use
methods of road paving not covered by the ’941 Patent and that Road Science’s patent enforcement
activities are harming Roadtec’s business. Dkt. # 28-3. On January 13, 2012, Road Science filed
a motion to join Arr-Maz and Arr-Maz Custom Chemicals, Inc. as parties in the Tennessee case, but
the motion remains pending. At the present time, neither Arr-Maz nor Shilling is a party in the
Tennessee case.
II.
As to defendant’s motion to dismiss for lack of personal jurisdiction, plaintiff bears the
burden of establishing that the Court has personal jurisdiction over the defendant. OMI Holdings,
Inc. v. Royal Ins. Co. of Canada, 149 F.3d 1086, 1091 (10th Cir. 1998). “When a district court rules
on a Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction without holding an

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evidentiary hearing, . . . the plaintiff need only make a prima facie showing of personal jurisdiction
to defeat the motion.” Id. (citations omitted). “The plaintiff may make this prima facie showing by
demonstrating, via affidavit or other written materials, facts that if true would support jurisdiction
over the defendant.” Id. at 1091. “In order to defeat a plaintiff’s prima facie showing of
jurisdiction, a defendant must present a compelling case demonstrating ‘that the presence of some
other considerations would render jurisdiction unreasonable.’” Id. (quoting Burger King Corp. v.
Rudzewicz, 471 U.S. 462, 477 (1985)). The allegations of the complaint must be accepted as true
to the extent they are uncontroverted by a defendant’s affidavit. Taylor v. Phelan, 912 F.2d 429, 431
(10th Cir. 1990). If the parties provide conflicting affidavits, all factual disputes must be resolved
in plaintiff’s favor and a prima facie showing of personal jurisdiction is sufficient to overcome
defendant’s objection. Id.
As to defendant’s motion to transfer venue under 28 U.S.C. § 1404, defendant bears the
burden to establish that plaintiff’s chosen forum is inconvenient, and plaintiff’s choice of forum is
given considerable weight. Scheidt v. Klein, 956 F.2d 963, 966 (10th Cir. 1992). A court should
not transfer venue merely to shift the inconvenience of litigating from one party to another, and the
party seeking a transfer of venue must make a strong showing that the forum is inconvenient.
Employers Mut. Cas. Co. v. Bartile Roofs, 618 F.3d 1153, 1168 (10th Cir. 2010). When reviewing
a motion to transfer venue under § 1404, a court may consider evidence outside of the pleadings but
must draw all reasonable inferences and resolve factual conflicts in favor of the non-moving party.
Huang v. Napolitano, 721 F. Supp. 2d 46, 48 n.3 (D.D.C. 2010); United States v. Gonzalez &
Gonzales Bonds and Ins. Agency, Inc., 677 F. Supp. 2d 987, 991 (W.D. Tenn. 2010).

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III.
Shilling has filed a motion to dismiss on the ground that it is not subject to personal
jurisdiction in the Northern District of Oklahoma. Dkt. # 10. Shilling argues that its sole connection
to Oklahoma is an Oklahoma Department of Transportation road construction project in Latimer
County and that it has no other contacts with Oklahoma. Id. at 4-5. In the alternative, Shilling asks
to transfer the case to the District of Kansas for the convenience of the parties and witnesses.
Shilling claims that it does not regularly conduct business in Oklahoma, and its employees,
equipment, and records are located in Kansas. Dkt. # 10, at 2. Arr-Maz asks the Court to enjoin
Shilling from prosecuting the Kansas case under the first to file rule. Dkt. # 20.
A.
Shilling claims that it is not subject to personal jurisdiction in the Northern District of
Oklahoma, because it does not have a presence in Oklahoma and its sole contact with Oklahoma was
a road construction project located in the “Southern District of Oklahoma.”3 Dkt. # 10, at 2. ArrMaz responds that the complaint identifies at least one road construction project in Oklahoma in
which Shilling allegedly violated the ’941 Patent, and this alone is sufficient to show that Shilling
is subject to specific personal jurisdiction in Oklahoma. Dkt. # 19, at 7. Arr-Maz also argues that

3

The Court has reviewed an official map of the judicial districts of the federal court system
and has been unable to locate a “Southern District of Oklahoma.” In any event, it is
irrelevant what district within Oklahoma the road construction project was performed,
because the relevant analysis is whether Shilling has sufficient contacts with the “forum
state” to support the exercise of personal jurisdiction. See Intercon, Inc. v. Bell Atlantic
Internet Solutions, Inc., 205 F.3d 1244 (10th Cir. 2000) (considering whether the defendant
had sufficient minimum contacts with Oklahoma, rather than the specific judicial district in
which the case was filed).
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Shilling routinely bids on and works on road construction projects in Oklahoma, and that the Court
can exercise general personal jurisdiction over Shilling. Id. at 8-10.
For a court to exercise personal jurisdiction over a nonresident defendant,4 plaintiff must
demonstrate the existence of every fact required to satisfy both the forum’s long-arm statute and the
Due Process Clause of the United States Constitution. See OKLA. STAT. tit. 12, § 2004(F). “Because
Oklahoma’s long-arm statute permits the exercise of jurisdiction that is consistent with the United
States Constitution, the personal jurisdiction inquiry under Oklahoma law collapses into the single
due process inquiry.” Intercon, 205 F.3d at 1247 (citing Rambo v. Am. S. Ins. Co., 839 F.2d 1415,
1416 (10th Cir. 1988)); see also Hough v. Leonard, 867 P.2d 438, 442 (Okla. 1993).
“Due process requires that the nonresident defendant’s conduct and connection with the
forum state are such that the nonresident could reasonably anticipate being haled into court in that
state.” Conoco, Inc. v. Agrico Chem. Co., 115 P.3d 829, 835 (Okla. 2004) (citing World-Wide
Volkswagen Corp. v. Woodson, 444 U.S. 286, 297 (1980)). “The Due Process Clause permits the
exercise of personal jurisdiction over a nonresident defendant ‘so long as there exist minimum
contacts between the defendant and the forum State.’” Intercon, 205 F.3d at 1247 (quoting WorldWide Volkswagen, 444 U.S. at 291). The existence of such minimum contacts must be shown to
support the exercise of either general jurisdiction or specific jurisdiction. A court “may, consistent

4

Under 28 U.S.C. § 1338, this Court has original jurisdiction over “any claim for relief arising
under any Act of Congress relating to patents . . . .” A civil action for alleged patent
infringement “may be brought in any judicial district where the defendant resides, or where
the defendant has committed acts of infringement and has a regular and established place of
business.” 28 U.S.C. § 1400. Section 1400 is a venue provision only and the Court must
determine whether defendant is subject to personal jurisdiction in Oklahoma under the Due
Process Clause. See Brayton Purcell LLP v. Recordon & Recordon, 606 F.3d 1124 (9th Cir.
2010).
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with due process, assert specific jurisdiction over a nonresident defendant ‘if the defendant has
purposefully directed his activities at the residents of the forum, and the litigation results from
alleged injuries that arise out of or relate to those activities.’” Id. at 1247 (quoting Burger King
Corp. v. Rudzewicz, 471 U.S. 462, 472 (1985)). “When a plaintiff’s cause of action does not arise
directly from a defendant’s forum related activities, the court may nonetheless maintain general
personal jurisdiction over the defendant based on the defendant’s business contacts with the forum
state.” Id. at 1247 (citing Helicopteros Nacionales de Colombia v. Hall, 466 U.S. 408, 414-16 &
n.9 (1984)).
Arr-Maz argues that Shilling is subject to personal jurisdiction in Oklahoma, because the
complaint identifies a specific road construction project that took place in Oklahoma and that this
contact gives rise to Arr-Maz’s patent infringement claim. Shilling’s sole argument against the
exercise of specific personal jurisdiction is that the road construction project identified in the
complaint occurred in the “Southern District of Oklahoma,” and Shilling could not reasonably have
foreseen being haled into court in the Northern District of Oklahoma. Dkt. # 10, at 4-5. As the
Court has already noted, there is no “Southern District of Oklahoma” and, even if there were such
a judicial district, the personal jurisdiction analysis focuses on the forum state rather that the specific
district in which a case was filed. See supra, at 6 n.3. In a patent infringement case, the
jurisdictional analysis focuses on the place where the alleged infringement occurred, rather than the
domicile of the infringing party. North American Philips Corp. v. American Vending Sales, Inc.,
35 F.3d 1576, 1579 (Fed. Cir. 1994). The Court must consider where the alleged infringer directed
its activities, such as where the sale of an allegedly infringing product took place, in determining
whether the infringer purposefully directed its activities toward a particular forum. See Pan-

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American Prods. & Holdings, LLC v. R.T.G. Furniture Corp., 825 F. Supp. 2d 664, 685 (M.D.N.C.
2011); Oticon, Inc. v. Sebotek Hearing Systems, LLC, ___ F. Supp. 2d ___, 2011 WL 3702423
(D.N.J. 2011). In this case, Arr-Maz alleges that Shilling worked on a road construction project in
Oklahoma and that Shilling’s actions in Oklahoma infringed on ’941 Patent. Dkt. # 2, at 3. Patent
infringement is treated as intentional tort directed at the forum where the infringement occurred.
North American Philips Corp., 35 F.3d at 1579. Shilling contends that it did not infringe the patent
but, at this stage of the case, the Court must accept the well-pleaded allegations of the complaint as
true. Dkt. # 24, at 9. For the purpose of ruling on Shilling’s motion to dismiss, the Court accepts
as true that Shilling infringed the ’941 Patent and that at least one act of patent infringement
occurred in Oklahoma. Thus, Arr-Maz has alleged that Shilling purposefully directed its activities
to Oklahoma and that Arr-Maz’s patent infringement claim arises out of this contact, and the Court
finds that Shilling’s alleged act of patent infringement in Oklahoma is sufficient for the Court to
exercise specific personal jurisdiction over Shilling. See Shrader v. Biddinger, 633 F.3d 1235, 1239
(10th Cir. 2011).
Even if the Court were to find that specific personal jurisdiction were lacking, Arr-Maz also
argues that Shilling is subject to general personal jurisdiction in Oklahoma based on Shilling’s
continuous and systematic contacts with the state. A court may exercise general personal
jurisdiction over a non-resident defendant, even if the defendant’s forum activities did not give rise
to the case, when the defendant’s contacts with the forum are so systematic and continuous that it
could reasonably foresee being haled into court in the forum state. OMI Holdings, Inc., 149 F.3d
at 1090. Shilling’s part owner, Mike Shilling, states that Shilling performs 95 percent of its work
in Kansas and that it did not foresee being haled into court in Oklahoma. Arr-Maz responds that

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Shilling has bid for and completed work on at least six asphalt paving projects in Oklahoma during
2012, and that Shilling was working in Oklahoma as recently as June or July 2012. Dkt. # 19-2, at
3-4. This contradicts Shilling’s statement that it does not regularly solicit work in Oklahoma, and
the Court must resolve factual disputes in favor of the non-moving party when ruling on a motion
to dismiss for lack of personal jurisdiction. Taylor, 912 F.2d at 431. It is undisputed that Shilling’s
employees, equipment, and records are located in Kansas and that the majority of its business takes
place in Kansas. However, it appears that Shilling regularly works on road construction projects in
Oklahoma and that Shilling could reasonably expect to be subject to personal jurisdiction in
Oklahoma. For example, Shilling could reasonably foresee having to defend against claims of
defective workmanship or breach of contract in Oklahoma based on the six asphalt paving projects
in 2012. These contacts are sufficiently systematic and continuous to establish that Shilling could
reasonably expect to be haled into court in Oklahoma, and the Court could also exercise general
personal jurisdiction over Shilling.
Even though the Court has found that it has personal jurisdiction over defendant, the Court
must also consider whether the exercise of personal jurisdiction over defendant “comport[s] with
‘fair play and substantial justice.’” Trujillo v. Williams, 465 F.3d 1210, 1221 (10th Cir. 2006)
(quoting Equifax Servs., Inc. v. Hitz, 905 F.2d 1355, 1359 (10th Cir. 1990)). The Court must
consider five factors to determine if the exercise of personal jurisdiction over defendant would be
reasonable:
(1) the burden on the defendant, (2) the forum state’s interest in resolving the
dispute, (3) the plaintiff’s interest in receiving convenient and effective relief, (4) the
interstate judicial system’s interest in obtaining the most efficient resolution of
controversies, and (5) the shared interest of the several states in furthering
fundamental social policies.

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Id. (quoting Pro Axess, Inc. v. Orlux Distribution, Inc., 428 F.3d 1270, 1279-80 (10th Cir. 2005)).
The Tenth Circuit has stated that a defendant must present a “compelling case that the presence of
some other considerations would render jurisdiction unreasonable” and “[s]uch cases are rare.”
Rusakiewicz v. Lowe, 556 F.3d 1095, 1102 (10th Cir. 2009). The reasonableness prong of the due
process inquiry “evokes a sliding scale,” and a defendant may need less to defeat a showing of
personal jurisdiction if the plaintiff’s showing of minimum contacts is relatively weak. TH
Agriculture & Nutrition, LLC, 488 F.3d at 1292.
Shilling offers no argument as to any of the Trujillo factors and the Court will not supply
arguments on Shilling’s behalf, but the Court will briefly consider whether it would be consistent
with traditional notions of fair play and substantial justice to require Shilling to defend against ArrMaz’s claim of patent infringement in this Court. Shilling may face some burden by litigating in
this Court, because its employees and other sources of evidence are located in Kansas. However,
Shilling regularly works in Oklahoma and it does not appear that Shilling will face an undue burden
by litigating this case in Oklahoma. Arr-Maz maintains a presence in Oklahoma through its Road
Science division and it employs at least 30 employees in Tulsa, and the forum state has an interest
in resolving this case. This Court will be able to efficiently hear this case and grant full relief to
either party, and proceeding with this case in Oklahoma will not negatively impact the interstate
judicial system or the shared interests of the states. Thus, the Court does not find that traditional
notions of fair play and substantial justice require dismissal of this case.

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B.
Shilling also asks the Court to transfer this case to the District of Kansas for the convenience
of the parties and witnesses. Dkt. # 12. Under 28 U.S.C. § 1404(a),5 a court may transfer a case to
any judicial district in which it could originally have been filed “[f]or the convenience of parties and
witnesses.” The Tenth Circuit has identified several factors that should be considered by a district
court in ruling on a motion to transfer:
the plaintiff’s choice of forum; the accessibility of witnesses and other sources of
proof, including the availability of compulsory process to insure attendance of
witnesses; the cost of making the necessary proof; questions as to the enforceability
of a judgment if one is obtained; relative advantages and obstacles to a fair trial;
difficulties that may arise from congested dockets; the possibility of the existence of
questions arising in the area of conflict of laws, the advantage of having a local court
determine questions of local law; and, all other considerations of a practical nature
that make a trial easy, expeditious and economical.
Chrysler Credit Corp. v. Country Chrysler, Inc., 928 F.2d 1509, 1516 (10th Cir. 1991). When a
party files a motion to transfer venue, the moving party has the burden to prove inconvenience to
the parties and witnesses. Rivendell Forest Prods., Ltd., v. Canadian Pacific Ltd., 2 F.3d 990, 993
(10th Cir. 1993). Unless the moving party carries its burden to prove inconvenience to the parties
and witnesses and the balance is “strongly” in favor of the moving party, the plaintiff’s choice of
forum should not be disturbed. Scheidt, 956 F.2d at 965. “Merely shifting the inconvenience from

5

In its reply (Dkt. # 24), Shilling argues that its request for transfer of venue should be
considered under 28 U.S.C. § 1406, because venue is improper in this district. However,
under 28 U.S.C. § 1391(c), a corporation “resides” in any judicial district in which it is
subject to personal jurisdiction, and § 1400, the patent venue statute, has been interpreted
to incorporate the definition of “resides” stated in § 1391(c). See Brayton Purcell, 606 F.3d
at 1126. As the Court has already determined that it has personal jurisdiction over Shilling,
venue is also proper in the Northern District of Oklahoma. Thus, Shilling’s request for
transfer of venue should be considered under § 1404.
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one side to the other, however, obviously is not a permissible justification for a change of venue.”
Id.
Shilling argues that Arr-Maz’s choice of forum is entitled to little deference because ArrMaz does not reside in the Northern District of Oklahoma. A plaintiff’s choice of forum is generally
given significant deference, but this deference is lessened if the plaintiff does not reside in the
judicial district or if the “facts giving rise to the lawsuit have no material relation or significant
connection to the plaintiff’s chosen forum.” Employers Mut. Cas., Co., 618 F.3d at 1168. Arr-Maz
is a limited partnership organized under the laws of Delaware and it maintains its principal place of
business in Florida. Dkt. # 2, at 1. Shilling also points out that the road construction project
referenced in the complaint was performed in Latimer County, Oklahoma, and Latimer County is
in the Eastern District of Oklahoma. Dkt. # 24. However, Arr-Maz maintains its Road Science
division in Tulsa and it employs at least 30 employees in its Tulsa office. Dkt. # 19-6, at 3. The
Road Science division “develops, markets, uses, licenses and supports through technical services
certain asphalt recycling and paving technologies, techniques and processes, including, but not
limited to, the patented products and methods of the [’]941 Patent.” Dkt. # 19-6, at 3. This provides
a substantial local connection to the case. The Court finds that Arr-Maz’s choice of forum should
be given somewhat reduced deference, but the Court rejects Shilling’s request to give plaintiff’s
choice of forum little or no deference. While Arr-Maz is not a purely local company, Arr-Maz
maintains a presence in the Northern District of Oklahoma and it does not appear that Arr-Maz has
selected a forum in bad faith or for the sole purpose of inconveniencing Shilling.
Shilling argues that the convenience of the parties and witnesses strongly favors transfer of
venue, because Shilling and its employees are located in Kansas and Shilling maintains its records

13

in Kansas. Dkt. # 10. However, Shilling has not identified any specific witness with information
relevant to Arr-Maz’s patent infringement claim who is located in Kansas. The Tenth Circuit directs
district courts to consider not only the number of witnesses located in another forum, but also the
“quality or materiality of the testimony” of the out-of-state witnesses, the willingness of those
witnesses to come to the forum state, whether deposition testimony would be satisfactory, and
whether it would necessary to subpoena the out-of-state witnesses. Scheidt, 956 F.2d at 966.
Shilling offers no evidence allowing the Court to consider any of these factors. Arr-Maz argues that
its Road Science division is located in Tulsa, and that its Tulsa employees have substantial
knowledge of the ’941 Patent and Shilling’s alleged patent infringement. Dkt. # 19, at 12. This
suggests that Arr-Maz will be inconvenienced if it is required to litigate this case in Kansas. At
most, Shilling has shown that it would be more convenient for Shilling to litigate this case in the
District of Kansas. However, the Court will not transfer venue merely to shift the burden of
litigating from one party to the other, and the Court does not find that the convenience of the parties
and witnesses favors transfer of venue.
Shilling’s final argument is that judicial economy supports a transfer of venue, because this
case can be consolidated with the Kansas case if Shilling’s request for a transfer of venue is granted.
As the Court will explain in greater detail below, the Kansas case should be treated as the later-filed
case and the Court does not find that judicial economy is a valid reason to transfer venue over this
earlier-filed case to the District of Kansas. If Shilling is truly concerned about judicial economy,
Shilling has the option to request a transfer of its later-filed case to the Northern District Oklahoma
or to dismiss its duplicative lawsuit and assert counterclaims in this case. It would also not be
appropriate for this Court to transfer an earlier-filed case to another district when there is at least

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some evidence suggesting that Shilling’s attorney was engaging jurisdictional gamesmanship. The
Court has also considered the remaining Chrysler Credit factors, and finds no other factors that
would support Shilling’s request to transfer this case to the District of Kansas. Neither party has
raised any issues concerning the enforceability of a judgment entered by this Court or any obstacles
to a fair trial in this district. There are no conflict of law issues, because this is a patent case
involving the application of federal law. There are also no issues concerning difficulties caused by
the Court’s docket or any other practical considerations that support transfer of venue.
Considering all of the parties’ arguments and the Chrysler Credit factors, the Court finds that
Shilling’s request to transfer venue should be denied. Shilling has not shown that it would be
substantially more convenient for the parties or witnesses if this case were transferred to the District
of Kansas, and this appears to be a situation when transfer is being requested solely to shift any
inconvenience from one party to the other.
C.
Arr-Maz asks the Court to enjoin Shilling from proceeding with the Kansas case, because
this case was filed first and it would be a waste of the parties’ resources to litigate the same issues
in two courts. Dkt. # 20. Shilling responds that this case should be stayed while the Tennessee case
proceeds and, if the Court declines to stay this case, it should be left up to presiding judge in the
Kansas case whether to stay or dismiss that case. Dkt. # 28.
“The rule is that the first federal district court which obtains jurisdiction of parties and issues
should have priority and the second court should decline consideration of the action until the
proceedings before the first court are terminated.” Cessna Aircraft Co. v. Brown, 348 F.2d 689, 692
(10th Cir. 1965). A federal district court “which obtains jurisdiction of parties and issues may

15

preserve its jurisdiction by enjoining proceedings involving the same issues and parties, begun
thereafter” in another federal district court. Shannon’s Rainbow, LLC v. Supernova Media, Inc.,
683 F. Supp. 2d 1261, 1278 (D. Utah 2010). A district court should consider three factors when
determining if the first to file rule applies: “(1) chronology of the actions; (2) similarity of the
parties; and (3) similarity of the issues.” Id. The Court must look to the filing date of the complaints
in both cases to determine which case was filed first. Hospah Coal Co. v. Chaco Energy Co., 673
F.2d 1161, 1163 (10th Cir. 1982) (rejecting argument that case in which defendant was served first
should have priority and clarifying that the filing of the complaint is the event used to establish
priority of cases). However, the first to file rule is not mandatory and, instead, is a general rule of
deference in cases involving overlapping parties and issues. See Cherokee Nation v. Nash, 724 F.
Supp. 2d 1159 (N.D. Okla. 2010); see also O’Hare Int’l Bank v. Lambert, 459 F.2d 328, 331 (10th
Cir. 1972) (“The rule of comity is a self-imposed restraint upon an authority actually possessed. The
abstention doctrine is not an automatic rule; it rather involves a discretionary exercise of the court’s
equity powers where there exist special circumstances prerequisite to its application on a case-bycase basis.”).
The Court will initially dispose of Shilling’s argument that the Tennessee case is the “firstfiled” case for the purpose of Arr-Maz’s motion and Shilling’s request to stay this case while the
Tennessee case proceeds. See Dkt. # 29. A comparison of the complaints in this case and the
Tennessee case shows that the same issues are not being litigated in both cases. In this case, ArrMaz argues that Shilling’s methods and practices for asphalt paving are infringing on the ’941
Patent. The Tennessee case concerns Roadtec’s allegations that Road Science used improper
marketing tactics that interfered with Roadtec’s right to use non-infringing methods, and it

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essentially alleges that Road Science used the ’941 Patent to effect a restraint on trade. Dkt. # 28-3.
Even if Roadtec prevails in the Tennessee case, the ’941 Patent would not be declared facially
invalid and it could be enforceable in other circumstances. Neither Shilling nor Arr-Maz is a party
in the Tennessee case. This case and the Tennessee case involve different factual and legal issues,
and the Court finds that the Tennessee case should not be treated as the “first-filed” case between
Shilling and Arr-Maz. Based on this finding, the Court declines to stay this case while the
Tennessee case proceeds and Shilling’s motion to stay (Dkt. # 29) should be denied.
The Court will consider whether Shilling should be enjoined from proceeding with the
Kansas case. Application of the first to file rule clearly shows that this case was filed before the
Kansas case and it should be treated as the first-filed case when ruling on Arr-Maz’s motion (Dkt.
# 20). This case was filed on June 4, 2012, and the Kansas case was filed on June 12, 2012. The
parties agree that this case and the Kansas case involve identical parties and the same factual and
legal issues will be litigated in both cases. Dkt. # 10, at 13; Dkt. # 20, at 6. In fact, Shilling relies
on the “duplicative” nature of the Kansas case in support of its request to transfer venue. Dkt. # 10,
at 13. Based on the earlier filing date of this case, the identity of the parties in both cases, and the
complete overlap of issues, it is clear that the cases are substantially similar and this case should be
treated as the first-filed case. However, the Court declines to enjoin Shilling from prosecuting the
Kansas case. While this Court may have the discretion to issue the injunction requested by Arr-Maz,
such discretion should be rarely exercised “due to philosophical concerns regarding one court’s
control over another . . . .” Shannon’s Rainbow, LLC, 683 F. Supp. 2d at 1279. The parties have
presented no evidence that the Kansas case is proceeding or that Arr-Maz will be prejudiced unless
its request for an injunction is granted. Quite to the contrary, a review of the docket sheet in the

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Kansas case shows that Arr-Maz has filed a motion to dismiss, transfer, or stay the Kansas case, and
the presiding judge in the Kansas case should be permitted to consider the appropriate course of
action in that case. Thus, the Court finds that Arr-Maz’s motion (Dkt. # 20) to enjoin Shilling from
prosecuting the Kansas case should be denied.
IT IS THEREFORE ORDERED that Defendant Shilling Construction Company, Inc.’s
Motion to Dismiss or, in the Alternative, to Transfer to the United States District Court for the
District of Kansas (Dkt. # 10), Plaintiff’s Motion to Enjoin Defendant from Prosecuting SecondFiled Action Involving the Same Parties and the Same Subject (Dkt. # 20), and defendant’s motion
to stay (Dkt. # 29) are denied.
DATED this 24th day of October, 2012.

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