Case 1:16-cv-00453-RGA Document 7 Filed 07/08/16 Page 1 of 27 PageID #: 1123
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`C.A. No. 16-453 (RGA)
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`C.A. No. 16-454 (RGA)
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`C.A. No. 16-455 (RGA)
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`ACCELERATION BAY LLC,
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`ACTIVISION BLIZZARD, INC.
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`Defendant.
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`ACCELERATION BAY LLC,
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`ELECTRONIC ARTS INC.,
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`Defendant.
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`ACCELERATION BAY LLC,
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`TAKE-TWO INTERACTIVE SOFTWARE,
`INC., ROCKSTAR GAMES, INC. and
`2K SPORTS, INC.,
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`Plaintiff,
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`v.
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`Plaintiff,
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`Plaintiff,
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`v.
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`v.
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`Defendants.
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`DEFENDANTS’ OPENING BRIEF IN SUPPORT OF THEIR MOTION TO DISMISS,
`STAY, OR TRANSFER VENUE TO THE UNITED STATES DISTRICT COURT FOR
`THE NORTHERN DISTRICT OF CALIFORNIA
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`
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`

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`Case 1:16-cv-00453-RGA Document 7 Filed 07/08/16 Page 2 of 27 PageID #: 1124
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`Jack B. Blumenfeld (#1014)
`Stephen J. Kraftschik (#5623)
`MORRIS, NICHOLS, ARSHT &TUNNELL LLP
`1201 North Market Street
`P.O. Box 1347
`Wilmington, DE 19899
`(302) 658-9200
`jblumenfeld@mnat.com
`skraftschik@mnat.com
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`Attorneys for Defendants
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`OF COUNSEL:
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`Michael A. Tomasulo
`Gino Cheng
`David K. Lin
`WINSTON & STRAWN LLP
`333 S. Grand Avenue, 38th Floor
`Los Angeles, CA 90071
`(213) 615-1700
`
`David P. Enzminger
`WINSTON & STRAWN LLP
`275 Middlefield Road
`Menlo Park, CA 94025
`(650) 858-6580
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`Daniel K. Webb
`WINSTON & STRAWN LLP
`35 West Wacker Drive
`Chicago, IL 60601
`(312) 558-5600
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`

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`Case 1:16-cv-00453-RGA Document 7 Filed 07/08/16 Page 3 of 27 PageID #: 1125
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`
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`I.
`
`II.
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`TABLE OF CONTENTS
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`
`Page
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`NATURE AND STAGE OF THE PROCEEDINGS ........................................................ 1
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`SUMMARY OF ARGUMENT ....................................................................................... 2
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`III.
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`STATEMENT OF FACTS .............................................................................................. 3
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`A.
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`B.
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`C.
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`D.
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`The Parties Have Meaningful Connections to California ...................................... 3
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`The History Of The Alleged Inventions ................................................................ 5
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`Boeing’s Efforts To License The Asserted Patents ............................................... 5
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`The Dismissed Actions ........................................................................................ 7
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`IV.
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`ARGUMENT .................................................................................................................. 7
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`A.
`
`B.
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`The “First-To-File” Rule Supports Dismissal Of These Actions ........................... 7
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`Alternatively, These Cases Should Be Transferred Pursuant To Section
`1404(a) ................................................................................................................ 9
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`1.
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`2.
`
`3.
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`These cases could have been brought in the Northern District of
`California ............................................................................................... 10
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`The private and public interest factors favor transfer ............................... 11
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`The balance of the factors favors transfer ................................................ 15
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`V.
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`CONCLUSION ............................................................................................................. 16
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`i
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`Case 1:16-cv-00453-RGA Document 7 Filed 07/08/16 Page 4 of 27 PageID #: 1126
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`
`
`Cases
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Alltrade, Inc. v. Uniweld Prods., Inc.,
`946 F.2d 622 (9th Cir. 1991) ................................................................................................. 9
`
`Audatex N. Am., Inc. v. Mitchell Int’l, Inc.,
`C.A. 12-139 (GMS), 2013 WL 3293611 (D. Del. June 28, 2013) ......................................... 10
`
`Cellectis S.A. v. Precision Biosciences, Inc.,
`881 F. Supp. 2d 609 (D. Del. 2012) ....................................................................................... 9
`
`E.E.O.C. v. Univ. of Penn.,
`850 F.2d 969 (3d Cir. 1988) .............................................................................................. 7, 8
`
`Elecs. for Imaging, Inc. v. Coyle,
`394 F.3d 1341 (Fed. Cir. 2005) .............................................................................................. 8
`
`EMC Corp. v. Bright Response, LLC,
`No. C-12-2841 EMC, 2012 WL 4097707 (N.D. Cal. Sept. 17, 2012) ..................................... 9
`
`In re Genentech, Inc.,
`566 F.3d 1338 (Fed. Cir. 2009) ............................................................................................ 14
`
`Genentech, Inc. v. Eli Lilly & Co.,
`998 F.2d 931 (Fed. Cir. 1993) abrogated on other grounds by Wilton v. Seven
`Falls Co., 515 U.S. 277, 115 S. Ct. 2137, 132 L. Ed. 2d 214 (1995) .................................. 7, 8
`
`Intravascular Research Ltd. v. Endosonics Corp.,
`994 F. Supp. 564 (D. Del. 1998) ............................................................................................ 1
`
`Jumara v. State Farm Ins. Co.,
`55 F.3d 873 (3d Cir. 1995) .................................................................................................... 2
`
`Link_A_Media Devices In Corp.,
`662 F.3d at 1124 ........................................................................................................ 2, 11, 14
`
`Mannie & Catherine Jackson Descendant Trust v. Rizzo,
`No. 15-659-RGA, 2015 WL 6449149 (D. Del. Oct. 26, 2015) ............................................. 11
`
`Microsoft Corp. v. Geotag Inc.,
`847 F. Supp. 2d 675 (D. Del. 2012) ..................................................................................... 13
`
`Nexans Inc. v. Belden Inc.,
`966 F. Supp. 2d 396 (D. Del. 2013) ....................................................................................... 8
`
`ii
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`

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`Case 1:16-cv-00453-RGA Document 7 Filed 07/08/16 Page 5 of 27 PageID #: 1127
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`
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`OpenLCR.com, Inc. v. Rates Tech., Inc.,
`112 F. Supp. 2d 1223 (D. Colo. 2000) ................................................................................... 8
`
`Save Power Ltd. v. Syntek Fin. Corp.,
`121 F.3d 947 (5th Cir. 1997) ................................................................................................. 9
`
`Semcon Tech, LLC v. Intel Corp.,
`C.A. No. 12-531-RGA, 2013 WL 126421 (D. Del. Jan. 8, 2013) .................................. passim
`
`Signal Tech, LLC v. Analog Devices, Inc.,
`C.A. No. 11-1073-RGA, 2012 WL 1134723 (D. Del. Apr. 3, 2012)..................................... 12
`
`In re TC Heartland LLC,
`No. 2016-105, 2016 WL 1709433 (Fed. Cir. Apr. 29, 2016) ................................................ 10
`
`In re Telebrands Corp.,
`No. 2016-106, 2016 WL 3033331 (Fed. Cir. Feb. 24, 2016) .................................................. 9
`
`VE Holding Corp. v. Johnson Gas Appliance Co.,
`917 F.2d 1574 (Fed. Cir. 1990) ............................................................................................ 11
`
`In re Verizon Bus. Network Servs. Inc.,
`635 F.3d 559 (Fed. Cir. 2011).............................................................................................. 16
`
`Wacoh Co. v. Kionix Inc.,
`845 F. Supp. 2d 597 (D. Del. 2012) (Andrews, J.) ............................................................... 13
`
`Statutes
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`28 U.S.C. § 1404(a) .................................................................................................... 1, 9, 10, 16
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`
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`iii
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`

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`Case 1:16-cv-00453-RGA Document 7 Filed 07/08/16 Page 6 of 27 PageID #: 1128
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`
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`I.
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`NATURE AND STAGE OF THE PROCEEDINGS
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`Defendants Activision Blizzard, Inc. (“Activision”), Electronic Arts Inc. (“EA”), Take-
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`Two Interactive Software, Inc. (“Take-Two”), 2K Sports, Inc. (“2K Sports”), and Rockstar
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`Games, Inc. (“Rockstar”) (collectively, “Defendants”) move jointly and separately to dismiss or
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`stay, or in the alternative transfer these actions.1 For the reasons explained below, this Court
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`should dismiss or stay these actions pursuant to the “first-to-file” rule, or in the alternative,
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`transfer them to the Northern District of California pursuant to 28 U.S.C. § 1404(a).
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`On June 16, 2016, Defendants each filed a declaratory judgment action for non-
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`infringement of the Asserted Patents2 in the United States District Court for the Northern District
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`of California against Plaintiff Acceleration Bay. D.I. 1, No. 3:16-CV-3375 (Activision); D.I. 1,
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`No. 4:16-CV-3377 (Take-Two Interactive Software); D.I. 1, No. 3:16-CV-3378 (Electronic Arts
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`Inc.) (collectively “California Actions,” Exs. 1-3 hereto). The next day, Plaintiff Acceleration
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`Bay filed these three cases claiming that Defendants infringe the same Asserted Patents. D.I. 1,
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`No. 16- 453 (Activision); D.I. 1, No. 16- 455 (Take-Two Interactive Software); D.I. 1, No. 16-
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`454 (Electronic Arts Inc.) (collectively “Delaware Actions”). Both the California Actions and
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`these Delaware Actions involve the same Asserted Patents, the same parties, and the same
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`accused products. Under the well-established first-to-file rule, these cases should be dismissed
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`or stayed in favor of the California Actions. Alternatively, these cases should be transferred
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`under 28 U.S.C. § 1404(a) because these cases could have been brought in the Northern District
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`of California, Acceleration Bay is headquartered in the Northern District of California, and the
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`parties’ and third-parties’ relevant witnesses and documents are located in California.
`
`1
`The filing of this motion to dismiss tolls the time period for Defendants to answer.
`Intravascular Research Ltd. v. Endosonics Corp., 994 F. Supp. 564, 567 n.3 (D. Del.
`1998) (explaining that motions to stay also toll the time period for answering).
`U.S. Patent Nos. 6,701,344; 6,714,966; 6,732,147; 6,829,634; 6,910,069; and 6,920,497.
`
`2
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`1
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`

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`Case 1:16-cv-00453-RGA Document 7 Filed 07/08/16 Page 7 of 27 PageID #: 1129
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`
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`II.
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`SUMMARY OF ARGUMENT
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`The “first-to-file” rule, absent exceptional circumstances not present here, controls the
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`forum in which a case will proceed. The California Actions are plainly the first filed actions
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`because Defendants filed the California Actions before Acceleration Bay filed these Delaware
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`Actions. The California Actions and these Delaware Actions involve the same patents, the same
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`parties, and the same accused products. Thus, following the first-to-file rule, these Delaware
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`Actions should be dismissed or stayed in favor of the California Actions.3
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`In the alternative, these cases should be transferred to the Northern District of California.
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`These cases involve disputes between companies with offices in California involving facts,
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`evidence, and witnesses that are closely tied to—and located in—California. The only
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`connection to Delaware is that Acceleration Bay and Defendants are Delaware companies, but
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`none has a regular place of business here. Of course, “[n]either § 1404 nor Jumara list a party’s
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`state of incorporation as a factor for a venue inquiry.” re Link_A_Media Devices In Corp., 662
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`F.3d at 1124 (referencing Jumara v. State Farm Ins. Co., 55 F.3d 873 (3d Cir. 1995)). Litigating
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`in California would be less burdensome than doing so in Delaware for Acceleration Bay,
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`Defendants, and likely third party witnesses. The factors strongly favor transferring these cases
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`to the Northern District of California.
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`
`3
`Plaintiff Acceleration Bay’s three previously filed patent infringement suits were
`dismissed without prejudice on June 20, 2017 for lack of subject matter jurisdiction
`(collectively “Dismissed Actions”). The Dismissed Actions are not germane to the “first
`to file” analysis because they are no longer pending and because this Court never had
`jurisdiction over them, The Dismissed Actions were Acceleration Bay LLC v. Activision
`Blizzard, Inc., No. 15-228 (D. Del. Filed Mar. 11, 2015), Acceleration Bay LLC v.
`Electronic Arts Inc., No. 15-282 (D. Del. Filed March 30, 2015), and Acceleration Bay
`LLC v. Take-Two Interactive Software, Inc. et al., No. 15-311 (D. Del. Filed April 13,
`2015).
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`2
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`

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`Case 1:16-cv-00453-RGA Document 7 Filed 07/08/16 Page 8 of 27 PageID #: 1130
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`
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`III.
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`STATEMENT OF FACTS
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`A.
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`The Parties Have Meaningful Connections to California
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`Plaintiff Acceleration Bay, a patent assertion entity, purports to have its principal place of
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`business at 370 Bridge Parkway, Redwood City, California 94065 and was only recently
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`incorporated in Delaware (on August 27, 2014). Ex. 4 (Recordation). Acceleration Bay’s CEO
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`Joe Ward works and resides in the Northern District of California. See Ex. 5. Acceleration Bay
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`claims to be the owner of the six Asserted Patents.
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`Defendants are developers and publishers of video games.4 Defendants Activision, EA,
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`and 2K Sports have their principal places of business in California.5 Defendants Take-Two and
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`Rockstar are affiliated with Defendant 2K Sports. See Ex. 9 (Take-Two Decl.), ¶ 4.
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`The Accused Games6 are video game software played on third party hardware platforms,
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`such as a PC or game console. In the gaming industry, games are initially developed by a studio
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`– referred to as the “developer” of the game, which creates the concept for the game and the
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`software. The games are sold and distributed by the game’s “publisher.” The Complaints
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`identify 15 Accused Games. Defendants are the publishers for each of these games. And, with
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`one exception (the accused product Destiny), each of these games is developed by Defendants or
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`their affiliates.
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`5
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`4
`See Ex. 6 (Decl. of Jesse Meschuk (“Blizzard Decl.”)), ¶ 7; Ex. 7 (Decl. of Betsy Contro
`(“Activision Decl.”)), ¶ 7; Ex. 8 (Decl. of Betsy Contro (“EA Decl.”)), ¶¶ 7-11; and Ex. 9
`(Decl. of Linda Zabriskie (“Take-Two Decl.”), ¶¶ 4-8.
`See Ex. 7 (Activision Decl.), ¶ 4; Ex. 8 (EA Decl.), ¶ 4; and Ex. 9 (Take-Two Decl.), ¶ 6.
`Blizzard, which is an affiliate of Defendant Activision, is also headquartered in
`California. Ex. 6 (Blizzard Decl.), ¶¶ 1, 4.
`The Accused Games are Call of Duty: Black Ops 3, Call of Duty: Advanced Warfare,
`World of Warcraft, Tiger Woods 14, Rory McIlroy PGA Tour, Plants vs. Zombies:
`Garden Warfare 1 & 2, FIFA 15, FIFA 16, NHL 15, NHL 16, NBA 2K15, NBA 2K16,
`Grand Theft Auto 5 and Grand Theft Auto Online.
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`6
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`3
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`Case 1:16-cv-00453-RGA Document 7 Filed 07/08/16 Page 9 of 27 PageID #: 1131
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`
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`Activision. Defendant Activision is the parent corporation of Activision Publishing, Inc.
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`and Blizzard Entertainment, Inc. (“Blizzard”). Treyarch Corporation (“Treyarch”) is a wholly-
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`owned subsidiary of Activision Publishing, Inc., and is located in Santa Monica, California. See
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`Ex. 7 (Activision Decl.), ¶ 8. Treyarch is a primary developer for the Accused Game Call of
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`Duty: Black Ops 3. Sledgehammer Games (“Sledgehammer”) is a wholly-owned subsidiary of
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`Activision Publishing, and is headquartered in Foster City, California, which is located in the
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`Northern District of California. Sledgehammer is a primary developer for the Accused Game
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`Call of Duty: Advanced Warfare. See id. at ¶ 9. Bungie, Inc. is a privately held Delaware
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`corporation and has headquarters in Bellevue, Washington. Bungie was responsible for
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`developing the Destiny game, which is published and distributed by Activision. See id. at ¶ 10.
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`Blizzard is responsible for the development, publication, and distribution of World of Warcraft,
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`and these activities all took place in California. See Ex. 6 (Blizzard Decl.), ¶ 7.
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`EA. Defendant EA is headquartered in Redwood City, California, which is located in the
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`Northern District of California. See Ex. 8 (EA Decl.), ¶ 5. Primary development of the accused
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`on-line multiplayer technology for all of the EA Accused Games occurred at EA’s offices in
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`Redwood City, California and Burnaby, Canada, close to Washington State. See id. at ¶¶ 7-9.7
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`Take-Two, 2K & Rockstar. Take-Two publishes and develops products through its
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`wholly owned labels, including Defendants 2K Sports and Rockstar. See Ex. 9 (Take-Two
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`
`7
`Other development for the Accused EA games occurred: at the following locations:
`1.
`Tiger Woods 14, Rory McIlroy PGA Tour: EA Tiburon, Orlando, Florida
`2.
`Plants vs. Zombies: Garden Warfare 1 & 2: EA Canada, Burnaby, British
`Columbia, Canada
`NHL 15, NHL 16: EA Canada, Burnaby, British Columbia, Canada
`FIFA 15, FIFA 16: EA Canada, Burnaby, British Columbia, Canada & EA
`Romania, Bucharest, Romania.
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`3.
`4.
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`4
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`Case 1:16-cv-00453-RGA Document 7 Filed 07/08/16 Page 10 of 27 PageID #: 1132
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`
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`Decl.), ¶ 4. 2K Sports is headquartered in Novato, California, which is located in the Northern
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`District of California. 2K Sports designed and developed NBA 2K15 and NBA 2K16. See id. at ¶
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`7. 2K’s Visual Concepts studio in Novato, California is a primary developer of NBA 2K15 and
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`NBA 2K16. See id. Visual Concepts worked on many aspects of the game, including on-line
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`multiplayer. See id. Rockstar’s Rockstar North studio (Edinburgh, Scotland) and Rockstar San
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`Diego studio (Carlsbad, California) are primary developers of Grand Theft Auto 5 and Grand
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`Theft Auto Online. See id. at ¶ 8. Rockstar San Diego worked on many aspects of the game,
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`including the game engine and on-line multiplayer functionality. See id.
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`Defendants each sell, market, and/or distribute the Accused Games in the Northern
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`District of California. See Ex. 7 (Activision Decl.), ¶ 15; Ex. 8 (EA Decl.), ¶ 4; Ex. 9 (Take-Two
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`Decl.), ¶¶ 7-8.
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`B.
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`The History Of The Alleged Inventions
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`The Asserted Patents were filed on July 31, 2000. The patents list Fred Holt and Virgil
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`Bourassa as the inventors (collectively the “Inventors”). They were both working as employees
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`within the Phantom Works R&D division of The Boeing Company (“Boeing”) in the Seattle,
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`Washington area. Ex. 10 (Press Release). Dr. Holt and Mr. Bourassa are still located in
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`Washington State. According to Boeing’s website, Phantom Works is located in Seal Beach,
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`California. Ex. 11 (http://www.boeing.com/contact-us.page). Dr. Holt, Mr. Bourassa, and
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`Boeing referred to the technology of the Asserted Patents as “Small-world Wide Area
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`Networking” (or “SWAN”). Id.
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`C.
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`Boeing’s Efforts To License The Asserted Patents
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`Beginning in the early 2000s, Boeing started efforts to license the patents. In July 2002,
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`Boeing gave the Inventors, through a company they formed named Panthesis, Inc., “an exclusive
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`right to commercialize” Boeing’s SWAN technology. Ex. 10. Panthesis was located in
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`5
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`Case 1:16-cv-00453-RGA Document 7 Filed 07/08/16 Page 11 of 27 PageID #: 1133
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`
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`Washington State, and the former CEO of Panthesis Linda Magnotti is still located in
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`Washington State. Panthesis made multiple efforts over the years to produce products using the
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`technology of the Asserted Patents and to license the Asserted Patents.
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`After Panthesis failed to achieve any commercial success with the Asserted Patents,
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`Boeing sought other opportunities to license or sell the Asserted Patents. Based on publicly
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`available information only, it appears that Sony Entertainment may have acquired Panthesis or
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`other rights which may be relevant to this lawsuit. Ex. 12 (“Panthesis (sold to Sony
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`Entertainment 2006”). Sony’s PlayStation division has its U.S. headquarters in San Mateo,
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`California, which
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`is
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`in
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`the Northern District
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`of California.
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` Ex.
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`13,
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`(https://www.playstation.com/en-us/corporate/about/). Defendants have license agreements with
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`Sony that allow Defendants to develop and publish games for the Sony PlayStation platform. For
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`this and other reasons, Sony’s personnel in San Mateo are potential witnesses.
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`Additional licensing efforts occurred no later than the fall of 2009 when Boeing
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`employees located in California reached out to Acorn Technologies Inc. (“Acorn”), which is
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`located in California. Ex. 14, Acorn Website Excerpts. Acorn is a patent broker and is believed
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`to have contacted numerous potential purchasers of the Asserted Patents including RPX,
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`Corporation, which is located in the Northern District of California.
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`Boeing employees located in California are believed to have worked with Acorn to
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`identify potential purchasers of the Asserted Patents. Ultimately, in December 2014, Boeing
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`entered into a transaction with Acceleration Bay’s predecessor, described as a “Patent Purchase
`
`Agreement.” Ex. 15, Public Version Declaration of Natasha Radovsky In Support of
`
`Acceleration Bay’s Opposition To Defendants’ Motion To Dismiss Filed in Acceleration Bay
`
`LLC v. Activision Blizzard, Inc., No. 15-228-RGA, D.I. 116 (D. Del. Mar. 25, 2016). Natasha
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`6
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`

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`Case 1:16-cv-00453-RGA Document 7 Filed 07/08/16 Page 12 of 27 PageID #: 1134
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`
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`Radovsky, who is a Boeing employee located in California, claims to have been involved in the
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`negotiation of this transaction. Id.
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`D.
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`The Dismissed Actions
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`In the spring of 2015, Acceleration Bay sued Defendants in the Dismissed Actions. On
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`June 20, 2016, those cases were dismissed for lack of subject-matter jurisdiction because Boeing
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`still owned the patents and therefore Acceleration Bay lacked standing. See, e.g., D.I. 148 at 10;
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`D.I. 149, No. 15-CV-228 (Activision Blizzard). The Dismissed Actions were at an early stage.
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`While some discovery had occurred, the Court had not addressed claim construction,
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`infringement, or validity of the Asserted Patents. The parties filed no substantive briefing on
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`claim construction. Indeed, the Court’s ruling on the motion to dismiss did not include any
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`analysis or discussion of the technical aspects of the Asserted Patents.
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`IV. ARGUMENT
`
`A.
`
`The “First-To-File” Rule Supports Dismissal Of These Actions
`
`The first-to-file rule applies to situations where, as here, two cases are filed in different
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`federal district courts involving the same issues and the same parties. “The general rule favors
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`the forum of the first-filed action, whether or not it is a declaratory action.” Genentech, Inc. v.
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`Eli Lilly & Co., 998 F.2d 931, 937 (Fed. Cir. 1993) abrogated on other grounds by Wilton v.
`
`Seven Falls Co., 515 U.S. 277, 115 S. Ct. 2137, 132 L. Ed. 2d 214 (1995); E.E.O.C. v. Univ. of
`
`Penn., 850 F.2d 969, 971 (3d Cir. 1988) (“[I]n all cases of federal concurrent jurisdiction, the
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`court which first has possession of the subject must decide it.”). The rule counsels that a later-
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`filed action involving the same controversy should be dismissed, transferred, or otherwise
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`enjoined in favor of the first-filed action. See Genentech, 998 F.2d at 937-38.
`
`7
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`

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`Case 1:16-cv-00453-RGA Document 7 Filed 07/08/16 Page 13 of 27 PageID #: 1135
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`
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`The California Actions are the first filed actions.8 They were filed on June 16, 2016—the
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`day before these cases were filed. Further, the California Actions and these cases involve the
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`same six Asserted Patents, the same parties, and the same accused products. The Delaware
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`Actions should therefore be dismissed.
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`Enforcement of the first-to-file rule is the norm. Nexans Inc. v. Belden Inc., 966 F. Supp.
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`2d 396, 401 (D. Del. 2013); see also Univ. of Penn., 850 F.2d at 976.9 Even if Acceleration Bay
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`were to argue that an exception to the first-to-file rule applies, it must do so in the Northern
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`District of California. The Federal Circuit has held that the court of the first-filed case should
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`resolve any alleged exceptions explaining that: “[w]here the overlap is complete or nearly
`
`
`8
`The Dismissed Actions cannot, as a matter of law, be considered the first-filed actions
`because those cases are no longer pending. OpenLCR.com, Inc. v. Rates Tech., Inc., 112
`F. Supp. 2d 1223, 1230 (D. Colo. 2000). In a similar case, a district court considered
`whether a prior case that was dismissed could serve as the first filed case and rejected the
`argument as “unwarranted.” Similarly, here, it is unwarranted to consider the Dismissed
`Actions as the first-filed cases. This Court found that Acceleration Bay lacked standing
`to assert those cases, and at Acceleration Bay’s request, the Dismissed Actions were
`dismissed. The Court never had jurisdiction over those cases. As the Third Circuit has
`explained, “[i]n all cases of federal concurrent jurisdiction, the court which first has
`possession of the subject must decide it.” Univ. of Penn., 850 F.2d at 971 (emphasis
`added). Here, because this Court never had jurisdiction over the Dismissed Actions,
`those actions no longer exist, this Court did not and does not have “possession of the
`subject” of the Dismissed Actions and they therefore cannot be the first-filed cases for
`these purposes.
`Recognized exceptions are narrow and include, in the Third Circuit, bad faith,
`“anticipatory filing” and forum shopping and, in the Federal Circuit, “sound reason that
`would make it unjust or inefficient.” Univ. of Penn., 850 F.2d at 976; Genentech, Inc.,
`998 F.2d at 938. Although anticipatory filing is an exception, the Federal Circuit has
`declined to reject the first-to-file rule solely on the basis of an anticipatory filing. Elecs.
`for Imaging, Inc. v. Coyle, 394 F.3d 1341, 1348 (Fed. Cir. 2005) (discussing Genentech,
`Inc., 998 F.2d at 938). Instead, the focus of the analysis has to be “the convenience and
`availability of witnesses, or absence of jurisdiction over all necessary or desirable parties,
`or the possibility of consolidation with related litigation, or considerations relating to the
`real party in interest.” Genentech, 998 F.2d at 938 (citing Kahn v. General Motors Corp.,
`889 F.2d 1078, 1081-83 (Fed. Cir. 1989). Here, the “convenience and availability of
`witnesses” staunchly supports the adjudication of these parties’ dispute in the Northern
`District of California, as explained in greater detail in §§ IV.B.2 and B.3, infra.
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`complete, the usual rule is for the court of first jurisdiction to resolve the issues [or exceptions].”
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`In re Telebrands Corp., No. 2016-106, 2016 WL 3033331, at *2 (Fed. Cir. Feb. 24, 2016). The
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`deference occurs to avoid the “risk inconsistent results, exactly the outcome to be avoided by the
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`rule in the first place.” EMC Corp. v. Bright Response, LLC, No. C-12-2841 EMC, 2012 WL
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`4097707, at *3 (N.D. Cal. Sept. 17, 2012) (collecting cases); Save Power Ltd. v. Syntek Fin.
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`Corp., 121 F.3d 947, 950 (5th Cir. 1997) (“The Fifth Circuit adheres to the general rule that the
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`court in which an action is first filed is the appropriate court to determine whether subsequently
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`filed cases involving substantially similar issues should proceed.”); Alltrade, Inc. v. Uniweld
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`Prods., Inc., 946 F.2d 622, 628 (9th Cir. 1991) (explaining that “normally [this argument] should
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`be addressed to the court in the first-filed action”). Indeed, Judge Robinson applied this same
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`rationale to stay proceedings in a second-filed case to permit the court in the first-filed case to
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`determine whether any exceptions to the first-to-file rule apply. Cellectis S.A. v. Precision
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`Biosciences, Inc., 881 F. Supp. 2d 609, 612 (D. Del. 2012). That same rationale should apply
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`here: if Acceleration Bay attempts to advance an exception to the first-to-file rule, this Court
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`should stay these cases so that the issue can be decided by the California Court.
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`Even if this Court were to consider the exceptions to the first-to-file rule, none of the
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`recognized exceptions apply. The California Actions were not filed in bad faith or for forum-
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`shopping. Indeed, as explained in detail below, sound reasons of convenience for the parties
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`justify deferring to the California Actions.
`
`B.
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`Alternatively, These Cases Should Be Transferred Pursuant To Section
`1404(a)
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`“For the convenience of parties and witnesses, in the interest of justice,” a district court
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`may “transfer any civil action to any other district or division where it might have been brought.”
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`28 U.S.C. § 1404(a). After demonstrating that the action “might have been brought” in the
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`proposed destination venue, courts in the Third Circuit consider the factors enumerated in
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`§ 1404(a) and other private and public interest factors. Semcon Tech, LLC v. Intel Corp., C.A.
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`No. 12-531-RGA, 2013 WL 126421, at *1 (D. Del. Jan. 8, 2013). Specifically, the private
`
`interest factors include: “(1) plaintiff’s forum preference as manifested in the original choice; (2)
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`the defendant’s preference; (3) whether the claim arose elsewhere; (4) the convenience of the
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`parties as indicated by their relative physical and financial condition; (5) the convenience of the
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`witnesses—but only to the extent that the witnesses may actually be unavailable for trial in one
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`of the [forums]; and (6) the location of books and records (similarly limited to the extent that the
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`files could not be produced in the alternative forum).” Id. (citing Jumara, 55 F.3d at 879-80 (3d
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`Cir. 1995)). The public interest factors include: “(7) the enforceability of the judgment; (8)
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`practical considerations that could make the trial easy, expeditious, or inexpensive; (9) the
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`relative administrative difficulty in the two [forums] resulting from court congestion; (10) the
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`local interest in deciding local controversies at home; (11) the public policies of the [forums];
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`and (12) the familiarity of the trial judge with the applicable state law in diversity cases.” Id.
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`1.
`
`These cases could have been brought in the Northern District of
`California
`
`Under 28 U.S.C. § 1404(a), the court first decides whether the action could have been
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`brought in the transferee district. Audatex N. Am., Inc. v. Mitchell Int’l, Inc., C.A. 12-139 (GMS),
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`2013 WL 3293611, at *1 (D. Del. June 28, 2013). There can be no dispute that this case could
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`have been brought in the Northern District of California. Acceleration Bay is headquartered in
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`the Northern District of California. Further, the Northern District of California has personal
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`jurisdiction over Defendants because Defendants each sell, market and/or distribute the Accused
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`Games in the Northern District of California. See supra III.A. In addition, EA and 2K Sports
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`have their principal places of business in the district and Activision’s Sledgehammer studio, a
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`primary developer for the accused Call of Duty: Advanced Warfare game, is located in the
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`district. In re TC Heartland LLC, No. 2016-105, 2016 WL 1709433, at *2 (Fed. Cir. Apr. 29,
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`2016); VE Holding Corp. v. Johnson Gas Appliance Co., 917 F.2d 1574, 1584 (Fed. Cir. 1990).
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`2.
`
`The private and public interest factors favor transfer
`
`On balance, the private and public interest factors weigh strongly in favor of transferring
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`these cases to the Northern District of California. Although this dispute is between companies
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`organized in Delaware, the convenience of the witnesses, the parties, the location of the alleged
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`infringement, and the location of the documents all favor the Northern District of California.
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`Plaintiff’s Forum Preference. The first factor—Acceleration Bay’s preference for this
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`forum—should be afforded little, if any, weight. Although Acceleration Bay is a Delaware
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`company, it was formed just before the original purchase of the Asserted Patents (less than two
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`years ago), and it has no other ties—much less longstanding ties—to Delaware. When a party’s
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`only connection with Delaware is its place of organization, the Federal Circuit has cautioned that
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`it is “inappropriate” to place “heavy reliance” on that party’s incorporation in Delaware. In re
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`Link_A_Media, 662 F.3d at 1223. As place of organization is not a factor in the venue inquiry,
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`“[i]t is certainly not a dispositive fact in the venue transfer analysis, as the district court in this
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`case seemed to believe.” Id. at 1224. In a similar case, this Court has recognized that “[w]hile
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`[the first factor] is an important consideration, it must give way