Jinni Tech Ltd v. Red.com Inc
2:17-cv-00217
W.D. Wash.Jan 25, 2018Background
- Red.com sued Jinni Tech in the Central District of California on March 2, 2017, alleging infringement of U.S. Patent No. 9,596,385.
- Jinni Tech filed this declaratory judgment action in the Western District of Washington seeking noninfringement and invalidity of the '385 patent.
- The Western District dismissed Jinni Tech’s declaratory claims under the first-to-file rule, citing the earlier California suit and similar parties/issues.
- The Central District of California later reconsidered and dismissed Red.com’s first-filed infringement suit because the patent had not issued when Red.com first filed.
- Red.com immediately refiled its infringement suit in California the same day.
- Jinni Tech moved for reconsideration (treated as a Rule 60(b) motion) in this court, arguing the Central District’s reversal undermined the basis for dismissal and requesting reinstatement of its declaratory claims.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Rule 60(b)(5) relief is available to vacate dismissal based on reversal of the earlier-filed suit | Jinni Tech: dismissal relied on the California court's prior ruling; reversal means reinstatement warranted | Red.com: Rule 60(b)(5) does not apply and first-to-file dismissal stands; even if applied, reversal does not undo dismissal | Denied — Rule 60(b)(5) inapplicable because the dismissal was not prospective; dismissal was final and not "based on" the prior judgment in the Rule 60(b)(5) sense |
| Whether the court’s reliance on the Central District’s prior order made its dismissal dependent on that order | Jinni Tech: court relied on California order to dismiss, so reversal undermines dismissal | Red.com: the Western District independently applied the first-to-file rule and cited other reasons; reference to the CA order was not dispositive | Denied — court’s dismissal rested on first-to-file doctrine independent of the CA court’s ruling |
| Whether vacatur of the first-filed suit restores first-to-file status to Red.com or otherwise alters priority | Jinni Tech: reversal of Red.com’s first suit eliminates its first-filed status so Jinni Tech’s declaratory claim should be revived | Red.com: Red.com refiled immediately; even if revived, Jinni Tech’s claims would then be later-filed and dismissible | Denied — reinstatement would be meaningless because Red.com refiled and first-to-file analysis would again favor dismissal |
| Whether Rule 60(b)(6) or "extraordinary circumstances" justify relief | Jinni Tech: briefly references Rule 60(b)(6) | Red.com: Jinni Tech has not shown extraordinary circumstances or provided authority | Denied — Jinni Tech did not meet the high standard or provide persuasive authority |
Key Cases Cited
- Harvest v. Castro, 531 F.3d 737 (9th Cir. 2008) (Rule 60(b)(5) applies only to judgments with prospective application)
- Maraziti v. Thorpe, 52 F.3d 252 (9th Cir. 1995) (judgment must have prospective effect to invoke Rule 60(b)(5))
- Tomlin v. McDaniel, 865 F.2d 209 (9th Cir. 1989) (Rule 60(b)(5) limited to judgments based on a prior judgment in a res judicata or same-proceeding sense)
- Gibbs v. Maxwell House, A Div. of Gen. Foods Corp., 738 F.2d 1153 (11th Cir. 1984) (dismissal is not prospective relief for purposes of Rule 60(b)(5))
- Azzolini v. Marriott Int'l, Inc., 417 F. Supp. 2d 243 (S.D.N.Y. 2005) (contrasting grant of Rule 60(b)(5) relief when judgment rested entirely on a vacated prior judgment)
- Wallerstein v. Dole Fresh Vegetables, Inc., 967 F. Supp. 2d 1289 (N.D. Cal. 2013) (discussion of first-to-file doctrine and its purposes)
- Guthy-Renker Fitness, LLC v. Icon Health & Fitness, Inc., 179 F.R.D. 264 (C.D. Cal. 1998) (noting invalidity of a first-filed suit is not a recognized exception to the first-to-file rule)