Judge Burke Recommends That Patent Infringement Case be Transferred to the Northern District of California Under the “First-Filed Rule”
In Fuisz Pharma LLC v. Theranos, Inc., C.A. No. 11-1061-SLR-CJB (D. Del. May 18, 2012), Magistrate Judge Burke recently issued a Report and Recommendation, recommending that defendant’s motion to dismiss, stay, or transfer be granted in part, and that the case be transferred to the Northern District of California pursuant to the first-filed rule. Id. at 1. On October 26, 2011, Theranos, Inc. (“Theranos”), a Delaware corporation with its principal place of business in Palo Alto, California, originally brought suit in the Northern District of California (the “California Action”) against Fuisz Technologies, Ltd. and several members of the Fuisz family for inventorship claims under the Patent Act and state law claims alleging that the Fuisz defendants’ misappropriated Theranos’ confidential information and used that information to improperly obtain U.S. Patent No. 7,824,612 (the “’612 patent”). Id. at 2. On October 27, 2011, the same day that they were served with the original Complaint filed in the California Action, two of the individual Fuisz defendants named in the California Action assigned certain rights to the ‘612 patent to Fuisz Pharma LLC (“Fuisz Pharma”), a Delaware limited liability company with its principal place of business in Bay Harbor Islands, Florida. Id. at 3. Fuisz Pharma then filed the instant suit on November 1, 2011 in D. Del. (the “Delaware Action”) against Theranos for infringement of the ‘612 patent. Id. at 3. In response to being sued here in Delaware, Theranos filed a motion seeking to have the Delaware action dismissed, transferred to the N.D. Cal., or stayed pending resolution of the California Action, on the grounds that the California Action is the “first-filed” action. Id. at 3. Theranos argued that its motion should be granted pursuant to the first-filed rule “because it filed the California Action prior to Fuisz Pharma’s filing of the instant litigation [in Delaware], and because the California Action involves the same parties and subject matter as this action.” Id. at 7. In its opposition, Fuisz Pharma countered that the first-filed rule did not apply “because the California Action does not involve the same issues and/or the same parties as this infringement litigation [in Delaware].” Id. at 8. More specifically, Fuisz Pharma argued that the two cases are “distinctly different” because the Delaware Action is a “straight forward patent infringement action,” while in the California Action there are “other legal claims at issue.” Id. at 8.
The Court sided with Theranos, concluding that the “first-filed” rule did apply, the California action was, indeed, the “first-filed” action, and that the Jumara factors favored transfer of the Delaware Action to the N.D. Cal. Id. at 8, 35. The Court noted that: (a) “all of the parties in this action are parties to the California Action”; (b) “both cases involve . . . the ‘612 patent”; (c) the claims in both suits “stem, to a very great degree, from the same subject matter and same nucleus of operative facts,” and that (d) “if both actions were allowed to proceed simultaneously, there would be substantial risk of inconsistent judgments.” Id. at 8-14. The Court further noted that the first-filed rule has been applied in patent cases, even where the cases are not so-called “mirror image” cases, provided that the “same common subject matter exists among the two cases.” Id. at 12 (citations and quotations omitted). As part of its analysis of the Third Circuit’s Jumara factors, the Court also noted that the “existence of the first-filed California Action has a significant impact on the balancing of the public and private interests in the case” and that “the balance of those factors weigh strongly in favor of transfer.” Id. at 34.