Case 3:16-cv-06180-WHA Document 81 Filed 03/13/17 Page 1 of 13
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`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE NORTHERN DISTRICT OF CALIFORNIA
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`COMCAST CABLE
`COMMUNICATIONS, LLC,
`Plaintiff,
`
` v.
`OPENTV, INC., and NAGRAVISION SA,
`Defendants.
` /
`
`No. C 16-06180 WHA
`
`ORDER GRANTING MOTION
`TO DISMISS; GRANTING IN
`PART MOTION TO STAY,
`DISMISS, OR TRANSFER; AND
`DENYING MOTION TO ENJOIN
`
`INTRODUCTION
`In this patent infringement action, defendants move to dismiss counts one through ten of
`the amended complaint, and separately to stay, dismiss, or transfer counts 11 through 13 of the
`amended complaint to the Eastern District of Texas. Plaintiff moves to enjoin proceedings in
`the Eastern District of Texas. Defendants’ motion to dismiss is GRANTED; defendants’ motion
`to stay, dismiss, or transfer is GRANTED IN PART; and plaintiff’s motion to enjoin is DENIED.
`STATEMENT
`The following facts are taken from the amended complaint unless otherwise specified.
`Plaintiff Comcast Cable Communications, LLC, is a Delaware company with its principal place
`of business in Pennsylvania. Comcast provides video, Internet, and voice services under the
`XFINITY brand to both residential and business customers. OpenTV, Inc., is a Delaware
`corporation with its principal place of business in San Francisco, California. Nagravision SA is
`a Swiss company with its principal place of business in Switzerland; within the United States,
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`Case 3:16-cv-06180-WHA Document 81 Filed 03/13/17 Page 2 of 13
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`its principal place of business is in El Segundo, California. Both OpenTV and Nagravision are
`subsidiaries of Kudelski SA, a Swiss firm. Together, OpenTV and Nagravision own the 13
`patents at issue (Dkt. No. 24 at 1–2).
`Kudelski and its subsidiaries have a history of monetizing their patent rights through
`litigation. Examples include prior patent infringement actions filed against Netflix, Inc., in
`December 2012; Apple Inc. in April 2014 and May 2015; Verizon Communications, Inc., in
`October 2015; and Hulu LLC in March 2016. Other examples include actions for declaratory
`judgment of non-infringement filed against Kudelski and its subsidiaries by Yahoo! Inc. in
`January 2016 and Time Warner Cable, Inc., in May 2016, based on allegations that Kudelski
`and its subsidiaries had threatened litigation for purported patent infringement (id. at 3–4, 7).
`On October 1, 2015, Clay Gaetje, Vice President for Licensing at Kudelski, emailed
`David Marcus, Comcast’s Chief Patent Counsel, “to start a dialogue about the licensing of
`Kudelski’s patent portfolio to certain aspects of Comcast’s pay television and over-the-top
`video services.” (Comcast describes this technology collectively as relating to its set-top
`boxes.) Following some correspondence between the two sides, on November 12, 2015, Gaetje
`sent Marcus a PowerPoint presentation titled, “Introductory Information Requested by
`Comcast” that described Kudelski’s patent portfolio and highlighted “15 representative patents,
`covering most aspects of Comcast’s video delivery and advertising services” (id. at 4–5).
`The November 2015 presentation dedicated two slides to each “representative” patent.
`The first slide listed basic information about the patent, including its inventors, priority date,
`expiration date, “Summary of Technology” (a summary of the patent’s function), “Claim
`Mapping” (a list of Comcast products or services accused of infringing the patent), and
`“Exemplary Relevance” (a summary of how the patent allegedly worked in the accused
`Comcast products or services). The second slide recited a specific claim of the patent
`(ostensibly one allegedly met by the accused Comcast products or services) (Dkt. No. 24-2).1
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`1 The 15 representative patents included 6,148,081 (“the ‘081 patent”), 7,661,117 (“the ‘117 patent”),
`7,243,139 (“the ‘139 patent”), 7,669,212 (“the ‘212 patent”), 7,900,229 (“the ‘229 patent”), 6,006,256 (“the
`‘256 patent”), 5,907,322 (“the ‘322 patent”), 7,028,327 (“the ‘327 patent”), 6,799,328 (“the ‘328 patent”),
`6,345,389 (“the ‘389 patent”), 6,725,461 (“the ‘461 patent”), 7,069,579 (“the ‘579 patent”), 6,985,586 (“the
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`Case 3:16-cv-06180-WHA Document 81 Filed 03/13/17 Page 3 of 13
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`The 15 representative patents identified in the November 2015 presentation did not
`translate perfectly into the array of patents at issue in this action. On January 28, 2016, Judge
`Edward Davila found that claims of the ‘081 patent were invalid. OpenTV, Inc. v. Apple Inc.,
`No. 5:15-cv-02008-EJD, 2016 WL 344845 (N.D. Cal. Jan. 28, 2016) (Judge Edward Davila).
`At a meeting between Marcus and Gaetje on the same day, and in anticipation of Judge Davila’s
`ruling, defendants withdrew the ‘081 patent from their lineup. At that same meeting,
`defendants also indicated they did not intend to further discuss patents ‘117, ‘212, ‘256, ‘579, or
`‘768. While presenting to Comcast representatives at the January 2016 meeting, however,
`defendants also introduced for the first time patent 6,530,082 (“the ‘082 patent”), another patent
`purportedly infringed by Comcast’s products or services (Dkt. No. 24 at 6).
`On October 26, 2016, Comcast filed the instant action. The original complaint sought
`declaratory judgment of non-infringement as to patents ‘082, ‘139, ‘229, ‘322, ‘327, ‘328, ‘389,
`‘461, ‘586, and ‘595 (Dkt. No. 1). Then, on December 5, 2016, Nagravision sued Comcast in
`the Eastern District of Texas for allegedly infringing three additional patents from Kudelski’s
`portfolio — 8,356,188 (“the ‘188 patent”), 7,725,720 (“the ‘720 patent”), and 7,725,740 (“the
`‘740 patent”). In response, on December 27, 2016, Comcast amended its complaint in the
`instant action to include claims for declaratory judgment of non-infringement as to patents ‘188,
`‘720, and ‘740 as well (Dkt. No. 24 at 1, 7).
`On January 26, the parties filed the instant motions. Defendants move to dismiss counts
`one through ten of the amended complaint — corresponding to the ten patents carried over from
`defendants’ November 2015 presentation and challenged in Comcast’s original complaint (Dkt.
`No. 43). Defendants also move to stay, dismiss, or transfer counts 11 through 13 of the
`amended complaint to the Eastern District of Texas (Dkt. No. 44). Comcast opposes both
`motions and moves to enjoin proceedings in the Eastern District of Texas (Dkt. No. 45). This
`order follows full briefing and oral argument.
`
`‘586 patent”), 6,895,595 (“the ‘595 patent”), and 6,018,768 (“the ‘768 patent”).
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`1.
`
`ANALYSIS
`DEFENDANTS’ MOTION TO DISMISS COUNTS ONE THROUGH TEN.
`Defendants move to dismiss counts one through ten of the amended complaint for
`failing to state a claim under Rule 12(b)(6). Both sides acknowledge that, following the
`abrogation of Form 18 on December 1, 2015, Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007),
`and Ashcroft v. Iqbal, 556 U.S. 662 (2009), set forth the applicable pleading standard under
`Federal Rule of Civil Procedure 8 (Dkt. Nos. 43 at 1, 53 at 1). Under that standard, “To survive
`a motion to dismiss, a complaint must contain sufficient factual matter, accepted as true, to
`‘state a claim to relief that is plausible on its face.’” Iqbal, 556 U.S. at 678 (citing Twombly, 550
`U.S. at 570). Although a court deciding a motion to dismiss must accept as true all factual
`allegations in the complaint, it is not bound to accept as true legal conclusions couched as
`factual allegations. Thus, “Threadbare recitals of the elements of a cause of action, supported
`by mere conclusory statements, do not suffice.” Ibid.
`Here, counts one through ten in Comcast’s amended complaint all follow the same
`format. Count eight, quoted in full below, is an illustrative example (Dkt. No. 24 at 15–16):
`89.
`Paragraphs 1-88 are incorporated herein by reference.
`90.
`Comcast has not infringed and does not infringe any claim
`of the ‘327 Patent, either directly or indirectly, literally or under
`the doctrine of equivalents, including by providing, making, using,
`offering for sale, or selling its Xfinity TV Anywhere or
`Xfinity.TV.net services accused of infringement in the November
`12, 2015, presentation. For example, the accused services do not
`meet at least the limitation of “determining, using an electronic
`program guide, an interactive application associated with a
`broadcast program.”
`91.
`As set forth above, an actual controversy exists between
`Comcast and Defendants with respect to infringement of the ‘327
`Patent and this controversy is likely to continue. Accordingly,
`Comcast desires a judicial determination and declaration of the
`respective rights and duties of the parties with respect to the ‘327
`Patent.
`Such a declaration is necessary and appropriate at this time
`92.
`in order that the parties may ascertain their respective rights and
`duties with respect to the matters set forth above.
`Paragraphs 89, 91, and 92 use boilerplate language repeated for each of counts one through ten
`and contribute no factual allegations (except by incorporating prior allegations by reference).
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`The crux of our inquiry is therefore paragraph 90 and its counterparts in other counts, each of
`which follows essentially the same format but plugs in specific information for (1) the patent
`number, (2) the name of the accused products or services, (3) the date of the presentation that
`accused said products or services of infringement, and (4) the limitation allegedly not met by
`the accused products or services.
`Comcast also points out that the amended complaint incorporates by reference
`allegations about the January 2016 presentation, as well as the attached slides from the
`November 2015 presentation (Dkt. No. 53 at 9). That incorporation, however, adds little to the
`allegations described above. The amended complaint alleges that defendants asserted some
`patents and declined to assert others at the January 28 meeting, but says nothing further as to
`any specific claims or accused products or services (see Dkt. No. 24 at 6). For each asserted
`patent, the November 2015 presentation summarizes what the patent does, identifies accused
`products or services, and quotes a relevant claim. It does not, however, explain how any
`accused product or service meets the claim limitations of a corresponding patent (see Dkt. No.
`24-2). In short, neither presentation incorporated by reference in the amended complaint
`significantly bolsters the factual allegations set forth in the actual counts of non-infringement.
`Defendants claim such allegations are insufficient under Twombly/Iqbal because they
`fail to state any facts about how the accused products or services actually work. Thus,
`defendants contend, the amended complaint contains no factual, non-conclusory allegations
`from which to infer that an accused product or service fails to meet at least one limitation at
`issue (Dkt. No. 43 at 6–9).
`Comcast responds that allegations identifying (1) the asserted patent, (2) the accused
`products or services, and (3) at least one limitation not met by said products or services are
`sufficient under Twombly/Iqbal (Dkt. No. 53 at 8–10). This order disagrees and concludes that,
`under Twombly/Iqbal, the complaint must contain factual allegations sufficient to show how or
`why a claim limitation is not met.
`Neither the Supreme Court nor our court of appeals has had occasion to apply
`Twombly/Iqbal to a non-infringement claim in a patent case following the abrogation of Form
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`18. As the undersigned has observed in another case prior to the abrogation of Form 18,
`however, inasmuch as a pleading seeking declaratory judgment of non-infringement is the
`“mirror image” of a pleading asserting claims of infringement, both are subject to the same
`pleading standard. PageMelding, Inc. v. ESPN, Inc., No. C 11–06263 WHA, 2012 WL
`3877686, at *2 (N.D. Cal. Sept. 6, 2012). With that in mind, a recent Federal Circuit decision
`applying the Twombly/Iqbal standard to a complaint for joint patent infringement is instructive.
`In Lyda v. CBS Corp., the plaintiff asserted four claims disclosing methods for receiving
`and processing audience responses to televised programs. 838 F.3d 1331, 1334–35 (Fed. Cir.
`2016). The operative complaint asserted “eight nearly identical counts of infringement,” each
`of which alleged “the participation of people under the control or direction of an independent
`contractor engaged by the Defendant.” For example, the operative complaint alleged that the
`defendant’s independent contractors directed “unnamed third parties” to test audience voting
`operations by using cell phones to send text messages. Id. at 1336. The district court dismissed
`the complaint under Rule 12(b)(6), concluding that the plaintiff failed to “establish which of
`Defendants’ alleged practices constitutes infringement” or “demonstrate any connection
`between the alleged infringing activities and his patent claims.” Id. at 1337.
`The Federal Circuit agreed. It construed the operative complaint as setting forth a
`theory of joint infringement, which required that “performance of every [claim] step [be]
`attributable to Defendants.” The operative complaint did not, however, “contain factual
`allegations relating to how the independent contractors directed or controlled the unnamed third
`parties,” nor did it “allege any relationship between the Defendants and the unnamed third
`parties . . . in a way that the actions of these unnamed third parties should be attributed to
`Defendants.” It thus contained “no allegations . . . that [could] form the basis of a reasonable
`inference that each claim step was performed by or should be attributed to Defendants.” Id. at
`1340 (emphasis added). In short, the operative complaint in Lyda did not satisfy Twombly/Iqbal
`because it stated in conclusory terms that the defendant’s conduct constituted joint infringement
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`but failed to set forth sufficient factual allegations showing how the defendant’s conduct
`constituted joint infringement.2
`Here, similarly, the amended complaint must go beyond only stating in conclusory terms
`that each accused product or service meets the elements of non-infringement and must also set
`forth factual allegations showing how each accused product or service specifically does not
`meet at least one claim limitation, such that it does not infringe the asserted patent (or showing
`how or why the asserted patent is invalid). To return to the example of count eight, it is
`impossible to infer from the amended complaint even a general idea of what the Xfinity TV
`Anywhere or Xfinity.TV.net services are, much less how they fail to meet the limitation of
`“determining, using an electronic program guide, an interactive application associated with a
`broadcast program” (see Dkt. No. 24 at 15–16). Again, count eight is representative of counts
`one through ten, all of which similarly lack adequate factual allegations to support inferences of
`non-infringement.3
`The amended complaint itself shows that Comcast can adequately plead a non-
`infringement claim under Twombly/Iqbal, because counts 11 through 13 do adequately plead
`non-infringement claims. For example, count 12 alleges (Dkt. No. 24 at 18 (emphasis added)):
`[B]ecause in Comcast Set-Top Boxes the accused root key is not
`used to decrypt an Entitlement Management Message key,
`Comcast Set-Top Boxes do not meet at least the limitation
`“[m]ethod for generating a root key . . . wherein the root key is
`used to allow decryption of transmission key, the transmission key
`allowing secure communication between the secure module and a
`management center.”
`Counts 11 and 13 similarly contain factual allegations that, accepted as true, support the
`inference that each of Comcast’s accused products or services therein do not meet at least one
`claim limitation in the corresponding asserted patent. The amended complaint itself thus
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`2 The Federal Circuit recognized that the abrogation of Form 18 did not actually affect Lyda because
`that case took place prior to December 1, 2015. Nonetheless, because the Federal Circuit construed the
`operative complaint as setting forth a theory of joint, as opposed to direct, infringement, Twombly/Iqbal applied
`to the plaintiff’s claims for relief. Lyda, 838 F.3d at 1337–39 & n.2.
`
`3 On the other hand, when defendants inevitably assert their own counterclaim for infringement,
`Twombly/Iqbal will also require them to plead factual allegations sufficient to show how or why Comcast’s
`accused products and services meet each and every claim limitation therein.
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`effectively highlights by contrast Comcast’s inadequate pleading of counts one through ten.
`The simple fact is that Comcast knows how its own products and services work and can easily
`show in its pleadings how, specifically, a single claim limitation is absent from each accused
`product or service. It must comply fully with the requirements of Twombly/Iqbal as to all
`counts, including counts one through ten.
`In their briefing, both sides cite in support of their respective positions numerous district
`court decisions applying Twombly/Iqbal — with apparently disparate results — in patent cases.
`While it would be redundant and unnecessary to discuss each one, this order briefly addresses
`two decisions relied upon by Comcast during oral argument, neither of which alters the outcome
`of this order.
`In Rain Gutter Pros, LLC v. MGP Mfg., LLC, Judge Ricardo Martinez denied the
`defendant’s motion for judgment on the pleadings under Rule 12(c) as to two claims for
`declaratory judgment of non-infringement, stating, “[the plaintiff] has identified one of its
`products and the claim elements from both asserted patents that it believes are missing. The
`Court finds this adequate to allege plausible non-infringement claims.” 55 F. Supp. 3d 1330,
`1336 (W.D. Wash. 2014) (citations omitted). Perhaps such allegations were adequate in Rain
`Gutter, where the operative complaint actually described the accused product — one far simpler
`than Comcast’s accused products and services here — and incorporated a detailed explanation
`of how it worked before identifying specific missing claim limitations like “vertical leg” and
`“first leg” that required little additional explanation. But insofar as Rain Gutter stands for the
`broad proposition that mere identification of an accused product or service and recitation of an
`asserted claim limitation — coupled with a conclusory assertion that the former does not meet
`the latter — satisfies Twombly/Iqbal, this order respectfully disagrees. Rain Gutter actually
`dismissed four other claims for declaratory judgment of invalidity and patent misuse because
`the plaintiff failed to allege actual facts to support those legal positions. Ibid. Twombly/Iqbal
`does not require less of claims for declaratory judgment of non-infringement. As stated, this
`order concludes such claims must plead sufficient facts from which the reader could at least
`plausibly infer why or how a claim limitation is not met.
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`In Avago Techs. Gen. IP (Singapore) PTE Ltd. v. Asustek Comput., Inc., Judge Edward
`Chen denied the defendant’s motion to dismiss a claim for patent infringement, stating,
`“nothing about Twombly and Iqbal suggests that a patent infringement complaint that largely
`tracks the language of the claims to allege infringement is insufficient per se. Here, the
`allegations are not as conclusory as that formerly permitted under Form 18 and has sufficient
`specificity to provide at least some notice to ASUS. Moreover, this District generally has not
`required detailed infringement theories until the time that infringement contentions are served,
`which is typically several months after a complaint has been filed.” Nos. 15-cv-04525-EMC,
`16-cv-00451-EMC, 2016 WL 1623920, at *4 (N.D. Cal. Apr. 25, 2016) (Judge Edward Chen).
`First, while Avago rejected the notion that “a patent infringement complaint that largely tracks
`the language of the claims to allege infringement is insufficient per se” (emphasis added), it did
`not endorse the very different proposition — suggested by Comcast here — that a patent
`infringement (or non-infringement) complaint that only tracks the language of the asserted
`claims is sufficient per se. Second, and as Judge Chen noted, the operative complaint in Avago
`contained more than conclusory allegations that merely tracked the language of the asserted
`claims. Comcast’s amended complaint here, by contrast, does not. Third, insofar as Avago’s
`reference to our Patent Local Rules is echoed in Comcast’s argument based on said rules, that
`point is addressed below.
`Comcast also contends the amended complaint is sufficient under Twombly/Iqbal
`because, given that defendants “initiated the dispute underlying the Complaint and identified
`both the patent claims and Comcast’s products and services described in the Complaint,” they
`“cannot reasonably argue” that the amended complaint does not provide fair notice (Dkt. No. 53
`at 10). This order disagrees. True, Twombly describes Rule 8(a)(2) as requiring “only a short
`and plain statement of the claim showing that the pleader is entitled to relief, in order to give the
`defendant fair notice of what the . . . claim is and the grounds upon which it rests.” 550 U.S. at
`555 (quotations omitted). By discussing the purpose of the rule, however, Twombly did not
`obviate the requirement set forth in the plain text of the rule itself — that a pleading must
`contain “a short and plain statement of the claim showing that the pleader is entitled to relief.”
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`Nor did Twombly carve out an exception to Rule 8 for situations where the defendant has “fair
`notice” of the claims at issue from a source other than the pleading.
`Comcast further contends that requiring factual allegations about how the accused
`products and services work, and how they relate to the asserted patents, would be inconsistent
`with Patent Local Rules 3-1 and 3-4, which — according to Comcast — “do not require such
`details at the pleading stage” (Dkt. No. 53 at 13). Comcast’s reliance on these rules is
`misplaced. First, PLR 3-1 and 3-4 do not speak to pleading requirements, and in any case
`cannot supersede the Federal Rules of Civil Procedure. Second, neither defendants’ motion nor
`this order suggests that Comcast needs to disclose infringement contentions (and supporting
`documentation) as required by PLR 3-1, or invalidity contentions (and supporting
`documentation) as required by PLR 3-4, at the pleading stage where Comcast needs to plead
`only one plausible basis for declaratory judgment of non-infringement. Contrary to Comcast’s
`suggestion, there is no reason why requiring compliance with Rule 8 and Twombly/Iqbal would
`necessitate such a result. Indeed, Comcast’s own adequate pleading of counts 11 through 13 —
`without necessitating any disclosures pursuant to our Patent Local Rules — belies its argument.
`In short, counts one through ten of the amended complaint fail to allege facts sufficient
`to support inferences of non-infringement under Twombly/Iqbal. Defendants’ motion to dismiss
`said counts under Rule 12(b)(6) is therefore GRANTED, subject to the last paragraph of this
`order. To be clear, to plead a claim for declaratory judgment of non-infringement, Comcast
`needs only to allege facts sufficient to support one plausible basis therefor. By pleading only
`one, it will not waive any additional arguments based on, e.g., invalidity or additional claim
`limitations not met by the accused products or services.
`2.
`DEFENDANTS’ MOTION TO STAY, DISMISS, OR TRANSFER COUNTS 11 THROUGH 13.
`After Comcast filed its complaint here as to counts one through ten, defendants sued
`Comcast in the Eastern District of Texas, asserting the ‘188, ‘720, and ‘740 patents. Comcast
`then amended its complaint here to add in counts 11 through 13 implicating those patents.
`Defendants move to stay, dismiss, or transfer counts 11 through 13 of the amended
`complaint to the Eastern District of Texas. Resolution of this dispute “presents a question
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`sufficiently tied to patent law” that it is governed by the law of the Federal Circuit. See
`Illumina, Inc. v. Qiagen NV, No. C 16-02788 WHA, 2016 WL 3902541, at *2 (N.D. Cal. July
`19, 2016) (citing Futurewei Techs., Inc. v. Acacia Research Corp., 737 F.3d 704, 708 (Fed. Cir.
`2013)). “When two actions that sufficiently overlap are filed in different federal district courts,
`one for infringement and the other for declaratory relief, the declaratory judgment action, if
`filed later, generally is to be stayed, dismissed, or transferred to the forum of the infringement
`action.” Futurewei, 737 F.3d at 708. Application of this principle is “generally a matter for a
`district court’s discretion, exercised within governing legal constraints.” Ibid.
`Here, there is no dispute that counts 11 through 13 in this action — added on in the
`amended complaint — mirror the earlier claims in the Texas action, and the parties in the two
`actions are substantially similar. The crux of the parties’ disagreement is whether counts 11
`through 13 involve substantially the same issues as counts one through ten, which Comcast had
`asserted in its original complaint here before defendants filed the Texas action. Counts one
`through ten, defendants say, involve “different areas of technology” from counts 11 through 13.
`Specifically, according to defendants, counts one through ten implicate “user experience” while
`counts 11 through 13 implicate “security,” i.e., user access to copyrighted digital content (Dkt.
`No. 44 at 8–13). Thus, defendants contend, different core subjects are involved.
`Comcast does not directly dispute defendants’ allegations regarding differences between
`the “user experience” technology underlying counts one through ten, and the “security”
`technology underlying counts 11 through 13 (see, e.g., Dkt. No. 55 at 7–8). Instead, Comcast
`responds that all counts in the amended complaint concern its set-top boxes. Specifically,
`Comcast points out that, on January 26, defendants filed a complaint with the United States
`International Trade Commission alleging that Comcast’s set-top boxes infringe two patents
`implicated in Comcast’s original complaint and one patent added in Comcast’s amended
`complaint. That defendants accuse one Comcast product of infringing both groups of patents,
`Comcast contends, shows that all 13 counts in this action involve substantially the same issues,
`such that it should be deemed the first-filed action as to all 13.
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`For the Northern District of California
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`United States District Court
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`Case 3:16-cv-06180-WHA Document 81 Filed 03/13/17 Page 12 of 13
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`Comcast relies too much on the ITC proceedings to show substantial similarity between
`the 13 counts. The set-top boxes in question are complex bundles of technology, as the
`numerous patents at issue in this matter indicate, and the fact that the same Comcast product is
`accused of infringing multiple patents is informative but not dispositive. Otherwise, different
`groups of patents — no matter how numerous or distinct their underlying technologies —
`would never be litigated in different forums as long as they manifest in the same complex end
`product. Comcast’s approach would require one judge to serve as a national patent examiner
`for all patents asserted against a single end product. Such a result would be untenable. This
`case, for example, is complicated enough without absorbing additional patents on the mere basis
`that said patents are part of the same sophisticated end product.
`During oral argument, Comcast also pointed to overlap between the ‘586 patent
`implicated in count five and the ‘720 patent implicated in count 11 to show that the patents in
`the Texas action substantially overlap with the patents in our case. At best, however, Comcast
`showed that out of ten patents originally at issue in our case, only one even arguably references
`“security” in a manner that overlaps with some language from a patent in the Texas action.
`This “overlap” is simply too tangential and attenuated to sweep into the ambit of Comcast’s
`original complaint the entire universe of what defendants describe as “security” patents. The
`similarities Comcast pointed out between phrases in the ‘586 and ‘720 patents are therefore
`inadequate to support Comcast’s position.
`If the Eastern District of Texas transfers its overlapping claims here, then we will
`manage somehow to roll those additional claims into the mix in our case. Meanwhile, all
`proceedings herein as to counts 11 through 13 — based on the ‘188, ‘720, and ‘740 patents —
`are STAYED pending proceedings in the Texas action. Defendants’ motion to stay, dismiss, or
`transfer is therefore GRANTED IN PART.
`3.
`COMCAST’S MOTION TO ENJOIN PROCEEDINGS IN THE EASTERN DISTRICT OF TEXAS.
`Comcast urges this Court to exercise its discretion to enjoin the Texas action. See
`Kerotest Mfg. Co. v. C-O-Two Fire Equipment Co., 342 U.S. 180, 185–86 (1952) (if a party
`charged with patent infringement sues first for declaratory relief, “subsequent suits against him
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`United States District Court
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`Case 3:16-cv-06180-WHA Document 81 Filed 03/13/17 Page 13 of 13
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`by the patentee can within the trial court’s discretion be enjoined pending the determination of
`the declaratory judgment suit”). As stated, the Court declines to exercise its discretion to
`combine the Texas action with this one, and instead leaves it up to the Eastern District of Texas
`to decide whether defendants’ claims should be transferred to this district. Moreover, it seems
`presumptuous for Comcast to think it deserves an injunction requiring all issues to be resolved
`here (rather than some in Texas) when it itself has failed to properly state claims for relief. If
`Comcast wished to anchor the entire controversy in this district, then it should have, as an initial
`matter, properly pled its own complaint here. It has yet to do so. Accordingly, Comcast’s
`motion to enjoin the Texas action is DENIED.
`CONCLUSION
`Subject to the foregoing, defendants’ motion to dismiss counts one through ten is
`GRANTED; defendants’ motion to stay, dismiss, or transfer counts 11 through 13 is GRANTED
`IN PART; and plaintiff’s motion to enjoin is DENIED.
`Plaintiff may file a second amended complaint by MARCH 27 AT NOON. Defendants
`must file their answer and counterclaim by APRIL 10 AT NOON.
`
`IT IS SO ORDERED.
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`Dated: March 13, 2017.
`
`