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Judge Burke recommends the Court enjoin defendant from maintaining later-filed action and deny defendant’s motion to transfer

Judge Burke recently considered plaintiffs’ motion to enjoin defendant from maintaining a later-filed action in the District of Massachusetts and defendant’s motion to transfer to that jurisdiction.  TSMC Tech., Inc., et al., v. Zond, LLC, C.A. No. 14-721-LPS-CJB (D. Del. Dec. 19, 2014).  In July 2013, Defendant filed several actions in the District of Massachusetts alleging infringement of seven patents that are different than, but related to, the patents-in-suit.  Id. at 1.  In June 2014, Plaintiffs filed the instant case seeking a declaratory judgment that they do not infringe that patents-in-suit.  Id. at 5.  The next day, defendant filed a complaint in the District of Massachusetts alleging infringement of the same patents.  Id.  Judge Burke acknowledged that the first-filed rule clearly applied to plaintiffs’ motion to enjoin, therefore resolution of the dispute focused on whether an exception to the rule applied.  Id. at 13.  Judge Burke found that no exception was applicable based on the facts presented here.  For example, Judge Burke found that because the parties had been engaged in escalating IP disputes and the fact that “both sides were taking tough, but fair steps in order to fully protect their rights[,]” the filing of the instant case could not be viewed as a “sound reason that would make it unjust or inefficient to continue the first-filed action.”  Id. at 18 (quotations omitted).  Judge Burke also found the “forum shopping” exception to the first-filed rule inapplicable because, among other things, Plaintiffs had “a legitimate, oft-recognized reason” to file suit in Delaware. (i.e., choosing to file suit in defendant’s state of incorporation)  Id. 18-24.  Regarding defendant’s motion to transfer, Judge Burke found that the Jumara factors largely weighed against transfer, therefore denial of defendant’s motion would be appropriate.  Id. at 24-37.

UPDATE:

Chief Judge Stark overruled defendant’s objections and adopted Judge Burke’s Report and Recommendation, granting plaintiffs’ motion to enjoin and denying defendant’s motion to transfer to the District of Massachusetts.  TSMC Tech., Inc., et al., v. Zond, LLC, C.A. No. 14-721-LPS-CJB (D. Del. Jan. 26, 2015).

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