Hitachi Kokusai Electric, Inc. et al v. ASM International, N.V. et al

Filing 79

ORDER - The Court ADOPTS Judge Acosta's Findings and Recommendation (ECF 61 ). Defendants' Motion to Dismiss, Stay, or Transfer Venue (ECF 19 ) is DENIED. Signed on 3/20/2019 by Judge Michael H. Simon. (mja)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF OREGON

KOKUSAI SEMICNDUCTOR
EQUIPMENT CORP., a Delaware
Corporation, and KABUSHIKI-KAISHA
KOKUSAI ELECTRIC,

Case No. 3:18-cv-00323-AC
ORDER

Plaintiffs,
v.
ASM INTERNATIONAL, N.V., a
Netherlands corporation, and ASM
AMERICA, INC., a Delaware corporation,
Defendants.

Michael H. Simon, District Judge.
United States Magistrate Judge John V. Acosta issued Findings and Recommendation in
this case on January 25, 2019. ECF 61. Judge Acosta recommended that Defendants’ Motion to
Dismiss, Stay or Transfer Venue (ECF 19) be denied.
Under the Federal Magistrates Act (“Act”), the Court may “accept, reject, or modify, in
whole or in part, the findings or recommendations made by the magistrate.” 28 U.S.C.
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§ 636(b)(1). If a party files objections to a magistrate judge’s findings and recommendations,
“the court shall make a de novo determination of those portions of the report or specified
proposed findings or recommendations to which objection is made.” Id.; Fed. R. Civ. P. 72(b)(3).
For those portions of a magistrate judge’s findings and recommendations to which neither
party has objected, the Act does not prescribe any standard of review. See Thomas v. Arn, 474
U.S. 140, 152 (1985) (“There is no indication that Congress, in enacting [the Act], intended to
require a district judge to review a magistrate’s report to which no objections are filed.”); United
States. v. Reyna-Tapia, 328 F.3d 1114, 1121 (9th Cir. 2003) (en banc) (holding that the court
must review de novo magistrate judge’s findings and recommendations if objection is made, “but
not otherwise”). Although in the absence of objections no review is required, the Act “does not
preclude further review by the district judge[] sua sponte . . . under a de novo or any other
standard.” Thomas, 474 U.S. at 154. Indeed, the Advisory Committee Notes to Fed. R. Civ.
P. 72(b) recommend that “[w]hen no timely objection is filed,” the Court review the magistrate
judge’s recommendations for “clear error on the face of the record.”
Defendants timely filed an objection (ECF 63), to which Plaintiffs responded. ECF 64.
Defendants object to the portion of Judge Acosta’s recommendation finding that (1) the issues in
the first-filed suit were not substantially similar under the first-to-file rule; (2) failing to apply the
transaction or occurrence test in determining whether this case was barred under the claim
splitting doctrine; and (3) giving undue weight to Plaintiffs’ choice of forum.
The Court has considered Judge Acosta’s thorough and well-reasoned opinion, as well as
Defendants’ objections and Plaintiffs’ responses. The Court agrees with the analysis and
recommended disposition in the Findings and Recommendation. It is undisputed that the Oregon
lawsuit involves different patents and different technologies than those implicated in the

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California lawsuit. Even though the Accused Products are the same in both actions, the Accused
Products are highly complex and involve multiple different technologies and the California
lawsuit and the Oregon lawsuit involve different patents, different claim terms, and different
claim elements. Additionally, because none of the patent claims in the California case have
reached the claim construction phase, the Court does not have enough facts to conclude that the
patents at issue here present sufficiently similar causes of action. The Court agrees with Judge
Acosta’s conclusion that ASM has failed to demonstrate that the accused products, processes,
and patents in the Oregon lawsuit are essentially the same as those in the California lawsuit.
The Court also agrees with Judge Acosta’s finding that Plaintiffs’ choice of forum is the
District of Oregon because Plaintiffs filed this lawsuit in the District of Oregon and this lawsuit,
involving these patents, has not previously been filed in any other district. This choice is given
deference when analyzing a motion to transfer venue under 28 U.S.C. § 1404. The Court agrees
with Judge Acosta’s analysis and concludes that the Jones factors weigh against transfer. See
Jones v. GNC Franchising, Inc., 211 F.3d 495, 499 (9th Cir. 2000).
Finally, the Court finds that Defendants’ notice of subsequent events (ECF 69) is not
probative of the underlying Motion to Dismiss, Stay, or Transfer Venue. Although the Court
concludes that the two actions are not sufficiently similar to require a dismissal or a stay of this
lawsuit, the Court recognizes that there are many areas of similarity and overlap between the two
lawsuits. Thus, it is appropriate that requests for production filed in the Oregon lawsuit and the
California lawsuit, including discovery motions relating to the Accused Products, would bear
some similarities. The discovery requests that Defendants draw the Court’s attention to do not
undermine the conclusion of the Findings and Recommendation.

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The Court ADOPTS Judge Acosta’s Findings and Recommendation (ECF 61).
Defendants’ Motion to Dismiss, Stay, or Transfer Venue (ECF 19) is DENIED.
IT IS SO ORDERED.
DATED this ___th day of March, 2019.

/s/ Michael H. Simon
Michael H. Simon
United States District Judge

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