`Case 1:15-cv-00311-RGA Document 166-1 Filed 09/16/16 Page 1 of 14 PagelD #: 5123
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`EXHIBIT A
`EXHIBIT A
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`Case 1:15-cv-00311-RGA Document 166-1 Filed 09/16/16 Page 2 of 14 PageID #: 5124
`Case 3:16-cv-03375-RS Document 39 Filed 09/01/16 Page 1 of 13
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`ACTIVISION BLIZZARD INC.,
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`Plaintiff,
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`v.
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`ACCELERATION BAY LLC,
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`Defendant.
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`Case No. 16-cv-03375-RS; 16-cv-3377-RS;
`16-cv-3378-RS
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`
`ORDER GRANTING MOTIONS TO
`TRANSFER AND DENYING AS MOOT
`MOTIONS TO DISMISS
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`TAKE-TWO INTERACTIVE SOFTWARE,
`INC., et al.,
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`Plaintiffs,
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`v.
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`ACCELERATION BAY LLC,
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`Defendant.
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`ELECTRONIC ARTS INC.,
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`Plaintiff,
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`v.
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`ACCELERATION BAY LLC,
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`Defendant.
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`Northern District of California
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`I. INTRODUCTION
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`Plaintiffs Activision Blizzard Inc. (“Activision”), Electronic Arts Inc. (“EA”), Take-Two
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`Interactive Software, Inc. (“Take-Two”),1 and defendant Acceleration Bay LLC (“AB”) have been
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`1 Take-Two is comprised of two subsidiary companies, Rockstar Games, Inc. and 2K Sports, Inc.
`These entities will be referred to collectively as “Take-Two.” Additionally, Activision, EA, and
`Take-Two will be referred to collectively as the “video game companies.”
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`Case 1:15-cv-00311-RGA Document 166-1 Filed 09/16/16 Page 3 of 14 PageID #: 5125
`Case 3:16-cv-03375-RS Document 39 Filed 09/01/16 Page 2 of 13
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`tussling in the District of Delaware over allegations that plaintiffs’ video games infringe AB’s
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`networking patents. A little over a year into those proceedings, the video game companies moved
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`to dismiss based on a defect in AB’s prudential standing. The court spotted the same defect but
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`elected to give AB fourteen days to fix it. Twelve days thereafter, AB announced the problems
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`with prudential standing were resolved, yet sensing opportunity, the video game companies
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`quickly commenced these declaratory actions on the opposite coast. AB, for its part, in lieu of
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`amending its pleadings, filed new Delaware complaints the next day. Now, as so often is the case
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`in these patent venue chess games, AB moves to dismiss or transfer these actions back to
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`Delaware.
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`For the reasons explained below, AB’s motions to transfer under the first-to-file rule will
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`be granted. AB’s re-filed complaints functionally amended its original 2015 Delaware pleadings,
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`and in any event, the instant matters were filed in anticipation of imminent litigation. It also is
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`appropriate to defer to the Delaware court’s superior familiarity with these proceedings. As such,
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`these suits will be transferred back to “The First State” where they belong.
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`II. BACKGROUND
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`AB is an incubator for next generation businesses, particularly those delivering content in
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`real-time. Activision, EA, and Take-Two are video game developers and publishers. The patents-
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`in-suit disclose “Small-world Wide Area Networking (“SWAN”)” technology that allegedly
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`implicates multiplayer or multisystem gaming environments.2 Lin Decl. Ex. 11. Fred Holt and
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`Virgil Bourassa, the inventors of the technology, worked at The Boeing Company (“Boeing”)
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`when the patents were issued. See id. Ex. 10.
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`Holt and Bourassa established Panthesis Inc. in 2001 to develop and commercialize
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`Boeing’s SWAN technology. Id. They eventually sought to sell or license the patents, and
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`ostensibly came into contact with Sony Entertainment, RPX Corporation, and Acorn
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`2 The patents-in-suit include U.S. Patent Nos. 6,701,344 (“the ’344 patent”), 6,829,634 (“the ’634
`patent”), 6,732,147 (“the ’147 patent”), 6,714,966 (“the ’966 patent”), 6,920,497 (“the ’497
`patent”), and 6,910,069 (“the ’069 patent”).
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`2
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`CASE NO. 16-cv-03375-RS
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`Northern District of California
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`United States District Court
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`Case 1:15-cv-00311-RGA Document 166-1 Filed 09/16/16 Page 4 of 14 PageID #: 5126
`Case 3:16-cv-03375-RS Document 39 Filed 09/01/16 Page 3 of 13
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`Technologies, Inc. None of these suitors ultimately worked out, but that changed in December
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`2014, when Boeing and AB entered into a “Patent Purchase Agreement.” Through the agreement,
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`AB purportedly acquired all “substantial rights” to the patents, and it commenced suit shortly
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`thereafter against Activision in the District of Delaware on March 11, 2015. AB sued EA and
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`Take-Two in the same venue on March 30 and April 13, 2015, respectively. The suits allege
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`infringement of the SWAN patents, which the video game companies reject.
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`The Delaware court related the cases for discovery, claim construction, and pre-trial
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`activities. Discovery then kicked off in December 2015. The parties served and responded to 434
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`requests for production and 42 interrogatories, while collectively serving eighteen (18) third-party
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`subpoenas. Kobialka Reply Decl. ¶ 8. Over 118,000 pages of documents were produced and the
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`parties held over two dozen days of source code review. Id. ¶ 9. After twice moving to compel
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`depositions, AB deposed two Activision 30(b)(6) employees. Id. ¶ 7. Four additional depositions
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`were scheduled to take place, and all depositions were conducted in locations convenient for the
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`witnesses. Id. AB served initial infringement claim charts on March 2, 2016, and the video game
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`companies served invalidity contentions on May 6, 2016. Id. ¶ 10. The Delaware court appointed
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`a special master sua sponte, and together with the special master held six hearings and issued ten
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`orders covering a range of matters.
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`Through the course of discovery, the video game companies received the “Patent Purchase
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`Agreement,” and after reviewing its terms, moved to dismiss based on a defect in prudential
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`standing. They correspondingly moved to stay proceedings pending the court’s decision, which
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`AB opposed, claiming it “may cure any defect in prudential standing.” Lin Decl. Ex. 15. At the
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`hearing on the motions, AB represented that Boeing was unlikely to join the suits, but noted
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`“prudential standing can be cured in multiple ways. To join the party and also amending the
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`agreement.” Kobialka Reply Decl. Ex. 1 at 69:21–23. On June 3, 2016, the court found AB was
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`an “exclusive licensee,” and that Boeing did not convey “all substantial rights,” giving rise to a
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`defect in prudential standing. Lin Decl. Ex. 5. The court accordingly indicated the video game
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`companies’ motion to dismiss would be granted “unless Boeing joins this action within 14 days.”
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`3
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`CASE NO. 16-cv-03375-RS
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`Northern District of California
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`United States District Court
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`Case 1:15-cv-00311-RGA Document 166-1 Filed 09/16/16 Page 5 of 14 PageID #: 5127
`Case 3:16-cv-03375-RS Document 39 Filed 09/01/16 Page 4 of 13
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`Id.
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` Twelve days later, in connection with inter partes review (“IPR”) proceedings initiated by
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`the video game companies, AB sent a letter to the Patent Trial and Appeal Board (“PTAB”), with
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`copies to the video game companies. It informed the PTAB “that subsequent to th[e] [Delaware
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`court’s] Order, Acceleration Bay and the Boeing Company entered into an Amended and Restated
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`Patent Purchase Agreement resolving all of the issues identified by the District Court in its June 3,
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`2016 Order.” Lin Decl. Ex. 32. The very next day, June 16, 2016—one day prior to expiration of
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`AB’s fourteen day window—the video game companies filed suit in this Court, seeking
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`declaratory judgments of non-infringement of the SWAN patents. The complaints invoke the
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`March 2015 Delaware litigation and AB’s letter to the PTAB to support the proposition the video
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`game companies have “a reasonable apprehension that [AB] may again commence litigation
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`against [them] on the asserted patents.” Compl. ¶ 14. The Northern California suits raise the
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`same claims and defenses as the Delaware actions.
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`On June 17, 2016, prior to expiration of the fourteen day window, AB sent the Delaware
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`court a letter to update it on the recent developments. It reported Boeing would not be joining the
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`pending actions, but said the amended purchase and license agreement “confirm[s] that
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`Acceleration Bay has standing to pursue its claims against the Defendants without Boeing.” Lin
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`Decl. Ex. 16. AB indicated it would “now” refile complaints against the video game companies,
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`and asked the court to reserve the existing trial dates, “as only minor adjustments to the schedule
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`will be necessary in view of the resolution of this standing issue within two weeks of the Court’s
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`Order.” Id. AB also requested the 2015 Delaware actions be dismissed without prejudice. Id.
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`AB refiled its claims against the video game companies in new actions that same day. Three days
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`later, on June 20, 2016, the Delaware court dismissed without prejudice the March and April 2015
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`actions commenced by AB. The court also vacated the trial dates and closed the dismissed cases.
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`See id. Exs. 17, 18.
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`All of the entities involved in this action are incorporated in the state of Delaware. Almost
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`all of them, however, also have significant ties to California. AB maintains its principal place of
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`4
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`CASE NO. 16-cv-03375-RS
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`Northern District of California
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`United States District Court
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`Case 1:15-cv-00311-RGA Document 166-1 Filed 09/16/16 Page 6 of 14 PageID #: 5128
`Case 3:16-cv-03375-RS Document 39 Filed 09/01/16 Page 5 of 13
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`business in Redwood City, California, and its counsel is based in Menlo Park, California.
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`Activision maintains its principal place of business in Santa Monica, California, and all but one of
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`its subsidiaries is also based in this state. EA, like AB, maintains its principal place of business in
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`Redwood City, California, and Take-Two’s subsidiaries operate out of Novato and San Diego.
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`Holt and Bourassa invented the technology in Boeing’s Phantom Works R&D Division.
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`They reside in Washington, but Phantom Works apparently operates in Seal Beach, California.
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`Linda Magnotti, the former CEO of Panthesis, is also located in Washington. All of the putative
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`patent buyers—Sony, Acorn Inc., and RPX Corporation—are located in California.
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`The accused products are video games sold throughout the entire United States. In
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`addition to California, they were developed in Florida, New York, Canada, and Romania. Some
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`potentially relevant witnesses are located in Illinois and Washington. In the 2015 actions, third-
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`party subpoenas were served on corporations in Texas and New York.
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`III. LEGAL STANDARD
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`The Declaratory Judgment Act permits courts the discretion to decline jurisdiction over
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`declaratory judgment claims. Wilton v. Seven Falls Co., 515 U.S. 277, 282 (1995); 28 U.S.C. §
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`2201 (“[A]ny court of the United States, upon the filing of an appropriate pleading, may declare
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`the rights and other legal relations of any interested party seeking such declaration.”) (emphasis
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`added). Courts routinely do so under the “first-to-file” rule, the “generally recognized doctrine of
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`federal comity which permits a district court to decline jurisdiction over an action when a
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`complaint involving the same parties and issues has already been filed in another district.”
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`Pacesetter Sys., Inc. v. Medtronic, Inc., 678 F.2d 93, 94–95 (9th Cir. 1982). The rule “favors the
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`forum of the first-filed action, whether or not it is a declaratory action,” see Genentech, Inc. v. Eli
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`Lilly & Co., 998 F.2d 931, 937 (Fed. Cir. 1993), in the service of “promot[ing] judicial efficiency
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`and prevent[ing] the risk of inconsistent decisions that would arise from multiple litigations of
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`identical claims,” Interactive Fitness Holdings, LLC v. Icon Health & Fitness, Inc., No. 10–CV–
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`04628–LHK, 2011 WL 1302633, at *2 (N.D. Cal. Apr. 5, 2011). The rule “should not be
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`disregarded lightly.” Alltrade, Inc. v. Uniwield Prods., Inc., 946 F.2d 622, 625 (9th Cir. 1991).
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`5
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`CASE NO. 16-cv-03375-RS
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`Northern District of California
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`United States District Court
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`Case 1:15-cv-00311-RGA Document 166-1 Filed 09/16/16 Page 7 of 14 PageID #: 5129
`Case 3:16-cv-03375-RS Document 39 Filed 09/01/16 Page 6 of 13
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`That said, it is “not a rigid or inflexible rule to be mechanically applied, but rather is to be applied
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`with a view to the dictates of sound judicial administration.” Pacesetter, 678 F.2d at 95.
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`In applying the rule, courts focus primarily on the chronology of the filings, the identity of
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`the parties, and whether the issues presented in the successive actions “substantially overlap.”
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`Intersearch Worldwide, Ltd. v. Intersearch Grp., Inc., 544 F. Supp. 2d 949, 957 (N.D. Cal. 2008).
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`The analysis may also encompass consideration of the “convenience factors” set forth in the
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`transfer statute, 28 U.S.C. § 1404(a), including “the convenience and availability of witnesses,
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`absence of jurisdiction over all necessary or desirable parties, possibility of consolidation with
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`related litigation, or considerations relating to the interest of justice.” Micron Tech., Inc. v.
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`Mosaid Techs., Inc., 518 F.3d 897, 904–05 (Fed. Cir. 2008).
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`IV. DISCUSSION
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`The parties each lay plausible claim to first-filer status, dispute whether these actions were
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`preemptive, and present disparate but somewhat overlapping “convenience” analyses. Looking at
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`the undisputed facts, the instant actions were technically first-filed, but the rule is not
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`mechanically applied, and the relation back doctrine counsels in favor of reaching the opposite
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`conclusion. Specifically, AB’s re-filed complaints functionally amended the co-pending 2015
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`Delaware complaints, and the amendments effectively “relate back,” such that AB’s current
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`Delaware actions appropriately are considered first-filed. Even if the instant actions were first-
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`filed, transfer would be appropriate because these matters were brought to preempt AB’s suits.
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`Lastly, the Delaware court has invested in this litigation, and thus the expeditious administration
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`of justice calls for deference to its superior familiarity with these proceedings.
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`A. First to File
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`Courts look to three factors when applying the first-to-file rule: (1) the chronology of the
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`two actions; (2) the similarity of the parties; and (3) the similarity of the issues. Alltrade, 946 F.2d
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`at 625. Here, the parties, patents, claims, and defenses are identical across the actions. The only
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`issue is one of chronology.
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`The facts are undisputed: AB filed suit in Delaware in the spring of 2015; the video game
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`6
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`CASE NO. 16-cv-03375-RS
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`Northern District of California
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`United States District Court
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`Case 1:15-cv-00311-RGA Document 166-1 Filed 09/16/16 Page 8 of 14 PageID #: 5130
`Case 3:16-cv-03375-RS Document 39 Filed 09/01/16 Page 7 of 13
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`companies filed declaratory judgment actions in this Court on June 16, 2016; AB filed new suits in
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`Delaware against the video game companies on June 17, 2016; the Delaware court dismissed the
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`2015 Delaware actions at AB’s request on June 20, 2016.
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`The video game companies argue the 2015 Delaware actions cannot be considered first-
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`filed because they are no longer pending, and thus are not concurrent with the California actions.
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`They further insist this Court is the first to obtain federal subject matter jurisdiction because the
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`2015 Delaware actions ultimately were dismissed for a defect in prudential standing. See Mentor
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`H/S/, Inc. v. Med Device All., Inc., 240 F.3d 1016, 1018 (Fed. Cir. 2001) (“[T]he issue of whether
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`an exclusive licensee has sufficient rights in a patent to bring suit in its own name is
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`jurisdictional.”). In a technical sense, the video game companies are correct that the California
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`actions are first-filed, given the Delaware actions currently pending were filed on June 17, 2016.
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`The first-to-file rule, however, is “not a rigid or inflexible rule to be mechanically applied, but
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`rather is to be applied with a view to the dictates of sound judicial administration.” Pacesetter,
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`678 F.2d at 95. Mindful of that premise, the 2015 Delaware actions functionally were first-filed,
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`as the circumstances are akin to those implicating Rule 15’s relation back doctrine.3
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`Pursuant to that doctrine, “[a]n action is considered to have been the first filed, even if it
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`was not chronologically first, if the claims relate back to an original complaint that was
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`chronologically filed first.” Halo Elecs., Inc. v. Bel Fuse Inc., No. C-07-06222 RMW, 2008 WL
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`1991094, at *2 (N.D. Cal. May 5, 2008). Schering Corporation v. Amgen Inc. is instructive for
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`present purposes. 969 F. Supp. 258 (D. Del. 1997). There, the patent holder, Schering, brought
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`suit in Delaware alleging patent infringement, and shortly thereafter, defendant Amgen
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`commenced a declaratory judgment proceeding in California. Id. at 262. Amgen then moved to
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`dismiss the Delaware action alleging a defect in prudential standing, and Schering subsequently
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`amended the Delaware complaint to join the necessary party. Id. The court found it acquired
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`3 To be clear, the relation back doctrine, strictly construed, may not technically apply, but the
`present circumstances warrant the same result its application would dictate.
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`7
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`CASE NO. 16-cv-03375-RS
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`Northern District of California
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`United States District Court
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`Case 1:15-cv-00311-RGA Document 166-1 Filed 09/16/16 Page 9 of 14 PageID #: 5131
`Case 3:16-cv-03375-RS Document 39 Filed 09/01/16 Page 8 of 13
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`federal subject matter jurisdiction on the date of the original complaint because the claims arose
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`under a federal statute and Schering met constitutional standing requirements, even if it failed to
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`meet prudential limitations. Id. at 266. More importantly, the court indicated Schering’s
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`amendment related back to the original complaint for purposes of the first-to-file rule because
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`there was no evidence Schering’s belief as to the validity of the original assignment was “anything
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`but in good-faith.” Id. at 267–68. As a result, the court applied the date of the original complaint
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`to determine which action was first-filed. Id. at 267–68.
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`Here, AB met constitutional standing requirements in the 2015 Delaware actions,4 but the
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`video game companies object to applying the “relation back” doctrine because AB re-filed
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`complaints, as opposed to amending pre-existing complaints. The re-filed complaints, however,
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`did not introduce any new parties, patents, products, or claims, and the circumstances suggest the
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`mistake as to the legal effectiveness of Boeing’s original assignment was made in good faith. As
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`such, the re-filed complaints functionally were equivalent to amendments of the co-pending 2015
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`complaints, as they were filed within the two-week window to cure the specific prudential
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`standing issues identified in the Delaware court’s order. Lastly, the district court dismissed the
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`original complaints without prejudice at AB’s request. AB will not be precluded from “relating
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`back” to the original complaints for purposes of the first-to-file rule on this particular record.
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`Adobe Systems Incorporated v. Bargain Software Shop, LLC reinforces this conclusion.
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`No. C–14–3721 EMC, 2014 WL 6982515 (N.D. Cal. Dec. 8, 2014). There, the court dismissed
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`Adobe’s initial action “on a technical procedural ground without prejudice to Adobe refiling the
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`action without misjoined parties.” Id. at *2. Adobe was then sued in Texas, but later re-filed its
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`action in the original court after settlement negotiations broke down. Id. The court acknowledged
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`4 Under Schering, the Delaware court thus acquired subject matter jurisdiction, though that finding
`is not necessarily crucial to application of the first-to-file rule. See Hilton v. Apple Inc., No. C–
`13–2167 EMC, 2013 WL 5487317, at *4 (N.D. Cal. Oct. 1, 2013) (finding state court had
`jurisdiction for purposes of the first-to-file rule even though federal court later dismissed removed
`action without prejudice based on lack of standing); Cadle Co. v. Whataburger of Alice, Inc., 174
`F.3d 599, 604 (5th Cir. 1999) (rejecting argument that district court must find proper jurisdiction
`in the first-filed court before applying the first-to-file rule).
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`8
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`CASE NO. 16-cv-03375-RS
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`Northern District of California
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`United States District Court
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`Case 1:15-cv-00311-RGA Document 166-1 Filed 09/16/16 Page 10 of 14 PageID #: 5132
`Case 3:16-cv-03375-RS Document 39 Filed 09/01/16 Page 9 of 13
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`the Texas action technically preceded Adobe’s re-filed suit, but found the re-filed matter was the
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`earlier filed action based on the “dictates of sound judicial administration.” Id. (quoting
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`Pacesetter, 678 F.2d at 95).
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`The video game companies invoke Wallerstein v. Dole Fresh Vegetables, Inc., 967 F.
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`Supp. 2d 1289 (N.D. Cal. 2013), and ASUSTeK Computer Inc. v. AFTG-TG LLC, No. 5:CV 11–
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`00192–EJD, 2011 WL 6845791 (N.D. Cal. Dec. 29, 2011), but neither authority is factually on
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`point. Wallerstein and ASUSTeK do not address the relation back doctrine or the situation where
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`dismissal of the initial actions is granted in favor of virtually identical filings already pending
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`before the same court.
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`In sum, AB’s re-filed complaints functionally amended the co-pending 2015 Delaware
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`complaints, and the amendments effectively relate back to the original pleadings, such that AB’s
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`current Delaware actions were first-filed. As the parties and issues are also the same, transfer of
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`the Northern California actions is warranted under the first-to-file rule.
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`B. Other Considerations
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`As detailed above, the first-to-file rule encompasses the transfer statute’s convenience
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`factors.5 These include the “convenience and availability of witnesses, absence of jurisdiction
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`over all necessary or desirable parties, possibility of consolidation with related litigation, [and]
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`considerations relating to the interest of justice.” Micron Tech., 518 F.3d at 904–05. The “general
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`rule favors the forum of the first-filed action,” but the Federal Circuit has recognized “trial courts
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`have discretion to make exceptions to this general rule in the interest of justice or expediency, as
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`in any issue of choice of forum.” Id. at 904 (citing Genentech, 998 F.2d at 937).
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`5 Section 1404(a) provides: “For the convenience of parties and witnesses, in the interest of
`justice, a district court may transfer any civil action to any other district or division where it might
`have been brought . . . .” 28 U.S.C. § 1404(a). The parties do not dispute this case could have
`been brought in either venue. See Glaxo Group Ltd. v. Genentech, Inc., No. C 10-00675, 2010
`WL 1445666, at *2 (N.D. Cal. Apr. 12, 2010) (movant must show that the transferee court is one
`in which the original action could have been brought).
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`9
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`CASE NO. 16-cv-03375-RS
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`Northern District of California
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`United States District Court
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`Case 1:15-cv-00311-RGA Document 166-1 Filed 09/16/16 Page 11 of 14 PageID #: 5133
`Case 3:16-cv-03375-RS Document 39 Filed 09/01/16 Page 10 of 13
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`1. Anticipation of Imminent Litigation Exception
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`Even if the instant actions had been first-filed, an exception to the rule effectively exists for
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`improper anticipatory suits, Alltrade, 946 F.2d at 628, though this consideration is “merely one
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`factor” in the overall analysis, Micron, 518 F.3d at 904. “A suit is anticipatory when the plaintiff
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`filed upon receipt of specific, concrete indications that a suit by defendant was imminent.” Z-Line
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`Designs, Inc. v. Bell’O Int’l, LLC, 218 F.R.D. 663, 665 (N.D. Cal. 2003). In making that
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`assessment, courts may consider “all of the circumstances and the totality of the correspondence
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`between the parties.” Kan. Int’l Ltd. v. Brian Moore Custom Guitars, Inc., No. C 08-3120 PJH,
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`2008 WL 4225450, at *1 (N.D. Cal. Sept. 12, 2008).
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`The video game companies contend they sought declaratory judgments upon learning AB
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`rightfully owned the patents, and they submit their suits were prompted by “significant
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`uncertainty” because the Delaware court “did not impose any obligation on Acceleration Bay at all
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`and certainly did not set a deadline for filing new suits.” Opp’n at 15:3–5, 16 n.16. These
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`arguments ring hollow. AB did not render the video game companies immobile by some
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`purported refusal to grasp the nettle and sue. See Micron, 518 F.3d at 902. To the contrary, they
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`already had been sued and were litigating these patents in Delaware for almost fourteen months.
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`Not just that, the video game companies contend AB was formed to acquire and assert the specific
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`patents-in-suit, Opp’n at 3:18–21, and they filed the instant actions only after learning the
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`problems with the pending Delaware actions had been resolved.
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`As detailed above, AB conveyed repeatedly it would cure any problems with prudential
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`standing, see Lin Decl. Ex. 15; Kobialka Reply Decl. Ex. 1 at 69:21–23, and it specifically told the
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`video game companies “that subsequent to th[e] [Delaware court’s] Order, Acceleration Bay and
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`the Boeing Company entered into an Amended and Restated Patent Purchase Agreement resolving
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`all of the issues identified by the District Court.” Lin Decl. Ex. 32 (emphasis added). Knowing
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`full well the parties had invested millions in litigation still pending on the opposite coast, the video
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`game companies only then commenced the instant actions, asserting the controversies were
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`“immediate.” Compl. ¶ 15.
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`10
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`CASE NO. 16-cv-03375-RS
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`Northern District of California
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`United States District Court
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`Case 1:15-cv-00311-RGA Document 166-1 Filed 09/16/16 Page 12 of 14 PageID #: 5134
`Case 3:16-cv-03375-RS Document 39 Filed 09/01/16 Page 11 of 13
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`These actions smack of gamesmanship, and hardly resemble the authorities the video game
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`companies invoke. For instance, in Barnes & Noble, Inc. v. LSI Corporation, 823 F. Supp. 2d 980
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`(2011), Barnes & Noble (“BN”) received a letter from the defendant contending BN was
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`infringing some of its patents. Id. at 982. The parties then “engaged in good faith negotiations”
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`and “rather than attend their next-scheduled meeting, BN filed suit.” Id. at 991. Those
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`circumstances align much more closely with the purpose of the Declaratory Judgment Act in
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`patent cases—“to provide the allegedly infringing party relief from uncertainty and delay
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`regarding its legal rights.” Micron, 518 F.3d at 902. The same can be said of Royal Queentex
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`Enterprises v. Sara Lee Corporation. No. C–99–4787 MJJ, 2000 WL 246599, at *5 (N.D. Cal.
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`Mar. 1, 2000). There, the defendant’s letter merely stated it was “willing to forego legal action to
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`enforce its rights only if [it] receive[d] prompt written assurances” from the plaintiff.6 Id. at *5.
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`In neither of these cases were the parties engaged in pending litigation, to say nothing of the
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`circumstance where one party had two-weeks to fix a problem, and only upon learning of the
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`remedy, did the opposing party sue. That the video game companies filed suit in anticipation of
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`litigation on its own is not sufficient to warrant transfer. Elecs. for Imaging, Inc. v. Coyle, 394
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`F.3d 1341, 1347–48 (Fed. Cir. 2005). This factor nonetheless favors transfer or dismissal of the
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`instant actions.
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`2. Interests of Justice
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`Analyzing the interests of justice entails an inquiry into “whether efficient and expeditious
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`administration of justice would be furthered” by transfer. Sherar v. Harless, 561 F.2d 791, 794
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`(9th Cir. 1977); accord Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1565 (Fed.
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`Cir. 1997). Matters of judicial economy “may be determinative to a particular transfer motion,
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`even if the convenience of the parties and witnesses might call for a different result.” Regents,
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`6 In Diablo Technologies, Inc. v. Netlist, Inc., No. 13–CV–3901–YGR, 2013 WL 5609321 (N.D.
`Cal. Oct. 11, 2013), another case upon which the video game companies rely, the court agreed the
`declaratory judgment action was anticipatory but found that sole factor did not warrant transfer in
`light of additional considerations of judicial efficiency. The same cannot be said here.
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`11
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`CASE NO. 16-cv-03375-RS
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`Northern District of California
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`United States District Court
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`Case 1:15-cv-00311-RGA Document 166-1 Filed 09/16/16 Page 13 of 14 PageID #: 5135
`Case 3:16-cv-03375-RS Document 39 Filed 09/01/16 Page 12 of 13
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`119 F.3d at 1565 (quoting Coffey v. Van Dorn Iron Works, 796 F.2d 217, 220–21 (7th Cir. 1986)).
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`Thus, in patent litigation “in which several highly technical factual issues are presented and the
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`other relevant factors are in equipoise, the interest of judicial economy may favor transfer to a
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`court that has become familiar with the issues.” Id.
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`Here, the expeditious administration of justice calls for deference to the Delaware court.
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`To be sure, the 2015 Delaware actions had not progressed to claim construction or trial. The
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`district judge and special master, however, held six hearings and issued ten orders covering
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`scheduling, source code, infringement contentions, third party discovery, depositions,
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`interrogatories, testing data, and standing. The transcripts indicate the hearings involved
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`demonstrations of the accused products, see, e.g., Kobialka Reply Decl. Ex. 1, and relatively
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`substantive discussions of the implicated technologies, see, e.g., id. Ex. 6. As the Delaware court
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`has acquired superior familiarity with the parties, patents, claims, and defenses, the interests of
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`justice support transfer of the instant cases.
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`3. Additional Convenience Factors
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`Other factors to consider include “(1) plaintiff’s choice of forum, (2) convenience of the
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`parties, (3) convenience of the witnesses, (4) ease of access to the evidence, (5) familiarity of each
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`forum with the applicable law, (6) feasibility of consolidation of other claims, (7) any local
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`interest in the controversy, and (8) the relative court congestion and time of trial in each forum.”
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`Finjan, Inc. v. Sophos Inc., No. 14-cv-01197-WHO, 2014 WL 2854490, at *2 (N.D. Cal. June 20,
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`2014). These additional considerations are mostly a wash, but in light of the above discussion, the
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`overall balance of the factors favors transferring these actions.
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`To start, the video game companies’ choice of forum is accorded little deference because
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`the suits were filed in antici