Judge Gregory M. Sleet recently considered defendant’s motion to dismiss, or alternatively to transfer, the pending patent infringement action to Texas where defendant had first-filed a declaratory judgment action involving the same parties and same five patents. Mitek Systems Inc. v. United Services Automobile Association, C.A. No. 12-462 (D. Del. Aug. 30, 2012). Both actions involved various state law claims, such as, breach of contract. Id. at 2. Judge Sleet first determined that the first-filed rule applied, finding that the same patents were at issue in both actions and that the cases involved the same parties. Id. at 3. Even though both cases involve separate state law claims, “it [wa]s clear that the focus of each case [wa]s the intellectual property rights” related to the agreement between the parties. Id. at 4 (internal quotations omitted). Judge Sleet next determined that no exception to the first-filed doctrine applied, such as the forum selection clause of the license agreement at issue in the later-filed action. Id. Judge Sleet held that enforcing the forum selection clause “would violate Delaware’s public policies promoting judicial efficiency and comity served by the first-filed rule.” Id. at 5 (internal quotations omitted). Last, Judge Sleet determined that transfer was appropriate, finding that all but one Jumara factor was either neutral or favored transfer. Id. at 8-15.
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