Posted On: December 11, 2012 by Robert Vrana

Judge Andrews Grants Motions to Dismiss Based on “First-Filed” Case Status and Lack of Subject Matter Jurisdiction

In a recent order, Judge Andrews granted two patent infringement declaratory judgment defendants’ motions to dismiss. See Sony Electronics Inc. v. Digitech Image Techs. LLC, C.A. No. 12-980-RGA, Order (D. Del. Dec. 7, 2012). Defendant Digitech originally filed an infringement action against Sony in the Central District of California. The California Court dismissed the suit because it joined several unrelated defendants in violation of the America Invents Act. Digitech refiled the suit against Sony alone on the same day the previous suit had been dismissed. Between the filing of the original suit and the refiled suit, however, Sony brought a declaratory judgment action against Digitech and its parent Acacia in the District of Delaware. Id. at 1-2.

Digitech argued that the original California suit was the “first-filed” suit and the “second-filed” Delaware suit should therefore be dismissed. Sony responded that the original California suit was “legally infirm” and should not be treated as the first-filed suit. Judge Andrews found that the original California suit had not been legally infirm, especially given that the original California suit had been permitted to proceed against the first-named defendant, while the suits against the other defendants were refiled. Accordingly, he granted Digitech’s motion to dismiss based on the first-filed status of the original California suit. Id. at 1-2.

Acacia argued that the declaratory judgment case against it should be dismissed because it did not own the patent-in-suit. Because Acacia could not bring suit on the patent, it argued, there could be no case or controversy between it and Sony. Citing Fina Research S.A. v. Baroid Drilling Fluids, Inc., 98 F.3d 1357 (Fed. Cir. 1996), Judge Andrews found this logic “compelling.” He rejected the argument that declaratory judgment jurisdiction existed because Acacia is a controlling parent of Digitech, who could and did bring a patent infringement suit, and pointed out that Acacia “presumably could not bring a counterclaim for patent infringement.” Judge Andrews therefore found the declaratory judgment suit against Acacia lacking in subject matter jurisdiction and granted Acacia’s motion to dismiss. Id. at 2-3.

Sony 12-980-RGA