914 F. Supp. 2d 125
D. Mass.2012Background
- EMC Corporation seeks a declaratory judgment of non-infringement and invalidity regarding three Parallel Iron patents in this district.
- Parallel Iron filed a patent-infringement suit against EMC in Delaware on June 18, 2012 over the same three patents.
- EMC filed the declaratory judgment action in this court the following day, June 19, 2012.
- defendant moves to dismiss or transfer under the first-to-file rule, arguing Delaware is proper.
- The court stays the action under the first-to-file rule to allow the Delaware court to address venue issues.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Applicability of the first-to-file rule | EMC urges departure from rule based on convenience and other factors. | Delaware should decide venue under first-to-file rule. | Court stays pending Delaware proceedings; applies first-to-file framework. |
| Micron interpretation in second-filed court | Micron requires weighing §1404 factors in second-filed court. | Micron governs first-filed court analysis, not second-filed. | Micron applies to first-filed court; second-filed court defers to Delaware. |
| Forum-shopping and special circumstances | Parallel Iron manufactured Delaware presence to gain forum advantage. | No improper forum-shopping; Delaware pending action controls. | No basis to depart from first-to-file; stay maintained to await Delaware ruling. |
| Disposition and timing of stay / renewal | Stay should be avoided or limited. | Stay is appropriate pending Delaware decision on venue. | Motion denied without prejudice to renewal after Feb. 12, 2013; stay continues pending that time. |
Key Cases Cited
- Smith v. McIver, 22 U.S. 532 (U.S. Supreme Court 1824) (first-to-file principle in concurrent jurisdiction)
- Crosley Corp. v. Hazeltine Corp., 122 F.2d 925 (3d Cir.1941) (patent-related first-file considerations)
- Cimbro Corp. v. Curran-Lavoie, Inc., 814 F.2d 7 (1st Cir.1987) (first-to-file generally preferred in venue decisions)
- Kerotest Mfg. Co. v. C-O-Two Fire Equip. Co., 189 F.2d 31 (3d Cir.1951) (exceptions to first-file rule; not applied mechanically)
- TransCanada Power Mktg., Ltd. v. Narragansett Elec. Co., 402 F.Supp.2d 343 (D.Mass.2005) (special circumstances and balance-of-convenience considerations)
- Biolitec, Inc. v. AngioDynamics, Inc., 581 F.Supp.2d 152 (D.Mass.2008) (forum-shopping and first-to-file exceptions)
- Micron Tech., Inc. v. Mosaid Tech., Inc., 518 F.3d 897 (Fed.Cir.2008) (rejection of a categorical rule favoring the first-filed court)
- A123 Sys. v. Hydro-Quebec, 657 F.Supp.2d 276 (D.Mass.2009) (application of convenience factors in 1404 transfers)
- TPM Holdings v. Intra-Gold Indus., 91 F.3d 1 (1st Cir.1996) (circuit acknowledgement of first-to-file considerations)