Barnes & Noble, Inc. v. LSI CORP.
823 F. Supp. 2d 980
N.D. Cal.2011Background
- BN and BN.com filed a declaratory judgment action for non-infringement of eleven patents against Agere and LSI.
- LSI claimed ownership of the patents and notified BN of alleged infringement; parties exchanged negotiations and information.
- BN filed the initial complaint on June 6, 2011; LSI and Agere later sued BN and BN.com in Pennsylvania for infringement plus an additional patent on July 27, 2011.
- BN.com and Agere were added in the FAC; BN.com asserted non-infringement and Agere faced added infringement/invalidity claims.
- Defendants moved to dismiss for lack of jurisdiction, failure to join necessary parties, and first-to-file considerations; motions remained pending.
- The court denied the motions and held that jurisdiction existed, improper joinder was curable, and the first-filed rule favored keeping the action in this district.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Subject matter jurisdiction in a DJ patent action | BN/BN.com had standing; amended complaint valid | LSI/Agere challenge lack of controversy or proper parties | Court denied the motion; jurisdiction existed and amendment cured defects |
| Whether BN.com and Agere could be joined as necessary/indispensable parties | Joinder is proper and timely; amendment permitted under Rule 15 | BN.com and Agere were necessary/indispensable and non-joinable | Motion to dismiss for nonjoinder denied |
| First-to-file rule applicability between districts | This action is first filed; relates back; efficiency favors this forum | PA action is first-filed; exceptions may apply (forum shopping, convenience) | First-to-file rule applied; this action denied dismissal; transfer denied |
| Relation back to original complaint for purposes of first-to-file | Amendment relates back under Rule 15(c); Krupski applicable | Relation back not applicable to broadened, amended action | Amendment relates back; relation back doctrine applied to include Agere and BN.com |
| Exceptions to the first-filed rule (e.g., bad faith, anticipatory suit, forum shopping) | No need to depart from first-filed rule; lack of bad faith; not anticipatory | Exception may apply due to economy and forum considerations | No compelling exception; first-filed rule applies and court denied dismissal/transfer |
Key Cases Cited
- MedImmune, Inc. v. Centocor, Inc., 409 F.3d 1376 (Fed.Cir.2005) (requires an actual controversy for declaratory judgments in patent cases)
- Krupski v. Costa Crociere S.p.A., 130 S. Ct. 2485 (2010) (relation back depends on notice to the proposed defendant during Rule 4(m) period)
- Rockwell Int'l Corp. v. United States, 549 U.S. 457 (2007) (amended complaints determine jurisdiction; focus is on amended pleading)
- Genentech, Inc. v. Eli Lilly and Co., 998 F.2d 1338 (Fed.Cir.1993) (patentee/exclusive licensee standing required for declaratory actions in patent area)
- Serco Services Co., L.P. v. Kelley Co., Inc., 51 F.3d 1037 (Fed.Cir.1995) (first-to-file considerations and anticipatory suits weighed as factors)
- Kerotest Mfg. Co. v. C-O-Two Fire Equipment Co., 342 U.S. 180 (1952) (joinder and identity issues in jurisdictional context)
- Pacesetter Sys., Inc. v. Medtronic, Inc., 678 F.2d 93 (9th Cir.1982) (first-to-file rule applies to complaint filing, not service)
- Halo Electronics, Inc. v. Bel Fuse Inc., 2008 WL 1991094 (N.D. Cal. 2008) (relation back concepts applied in first-filed context)