Case 1:16-cv-00774-RGA Document 22 Filed 07/15/16 Page 1 of 17 PageID #: 449
`
`
`PAUL ANDRE (State Bar No. 196585)
`pandre@kramerlevin.com
`LISA KOBIALKA (State Bar No. 191404)
`lkobialka@kramerlevin.com
`JAMES HANNAH (State Bar No. 237978)
`jhannah@kramerlevin.com
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Telephone: (650) 752-1700
`Facsimile: (650) 752-1800
`
`Attorneys for Defendant
`ACCELERATION BAY LLC
`
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE NORTHERN DISTRICT OF CALIFORNIA
`
`ACTIVISION BLIZZARD, INC.,
`
`
`
`
`
`
`Plaintiffs,
`
`v.
`
`
`ACCELERATION BAY LLC,
`
`
`
`
`
`Defendant.
`
`
`
`
`SAN FRANCISCO DIVISION
`Case No.: 3:16-cv-03375-RS
`
`DEFENDANT ACCELERATION BAY
`LLC’S MOTION TO DISMISS OR
`TRANSFER ACTIVISION BLIZZARD,
`INC.’S COMPLAINT UNDER THE FIRST-
`TO-FILE RULE, FED. R. CIV. P. 12(b)(3)
`
`AND 28 U.S.C. § 1404
`
`September 1, 2016
`Date:
`1:30 p.m.
`Time:
`Courtroom: 3, 17th Floor
`Before:
`Honorable Richard Seeborg
`
`
`
`
`
`ACCELERATION BAY’S MOTION TO DISMISS
`PLAINTIFF’S COMPLAINT FOR DECLARATORY JUDGMENT
`
`Case No. 3:16-cv-03375-RS
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`Case 1:16-cv-00774-RGA Document 22 Filed 07/15/16 Page 2 of 17 PageID #: 450
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`
`TABLE OF CONTENTS
`
`Page
`
`NOTICE OF MOTION AND MOTION. .................................................................................................1
`
`MEMORANDUM OF POINTS AND AUTHORITIES. .........................................................................2
`
`I.
`
`II.
`
`INTRODUCTION. .......................................................................................................................2
`
`STATEMENT OF ISSUES TO BE DECIDED ...........................................................................4
`
`III.
`
`STATEMENT OF FACTS ...........................................................................................................4
`
`A.
`
`B.
`
`Parties ................................................................................................................................4
`
`Acceleration Bay First Filed its Claims Against Activision in Early 2015 ......................4
`
`IV.
`
`ARGUMENT ................................................................................................................................6
`
`A.
`
`The DJ Action Should Be Dismissed in Favor of the Delaware Action ...........................6
`
`1.
`
`2.
`
`The First-To-File Rule Mandates Dismissal of Activision’s Later
`Filed DJ Action. ....................................................................................................6
`
`The DJ Action Should Be Dismissed As Activision Filed it in
`Anticipation of Litigation and to Frustrate Acceleration Bay’s
`Choice of Venue ...................................................................................................8
`
`B.
`
`To the Extent it is Not Dismissed, the DJ Action Should Be Transferred to
`the District of Delaware ....................................................................................................9
`
`V.
`
`CONCLUSION ...........................................................................................................................12
`
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`ACCELERATION BAY’S MOTION TO DISMISS
`PLAINTIFFS’ COMPLAINT FOR DECLARATORY JUDGMENT
`
`Case No. 3:16-cv-03375-RS
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`Case 1:16-cv-00774-RGA Document 22 Filed 07/15/16 Page 3 of 17 PageID #: 451
`
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Adobe Sys. Inc., v. Bargain Software Shop, LLC,
`No. 14-CV-3721-EMC, 2014 WL 6982515 (N.D. Cal. Dec. 8, 2014) ...............................................7
`
`Alltrade, Inc. v. Uniweld Prods. Inc.,
`946 F.2d 622 (9th Cir. 1991) ..........................................................................................................6, 8
`
`Aurora Corp. of Am. v. Fellowes, Inc.,
`No. CV-07-8306-GHK, 2008 WL 709198 (C.D. Cal. Feb. 27, 2008) ...............................................9
`
`Barnes & Noble,
`823 F.Supp.2d 980 (N.D. Cal. 2011) ..................................................................................................7
`
`Cisco Sys., Inc. v. TiVo, Inc.,
`No. C 12-02766 RS, 2012 WL 3279532 (N.D. Cal. Aug. 10, 2012) ................................6, 10, 11, 12
`
`Coffey v. Van Dorn Iron Works,
`796 F.2d 217 (7th Cir.1986) .............................................................................................................11
`
`Diablo Techs., Inc. v. Netlist, Inc.,
`No. 13-CV-3901-YGR, 2013 WL 5609321 (N.D. Cal. Oct. 11, 2013) ..............................................6
`
`Elecs. for Imaging, Inc. v. Coyle,
`394 F.3d 1341 (Fed. Cir. 2005)...........................................................................................................8
`
`Google Inc., v. Eolas Techs. Inc.,
`No. 15-CV-05446-JST, 2016 WL 3346529 (N.D. Cal. June 16, 2016) .............................................7
`
`Gulf Oil Co. v. Gilbert,
`330 U.S. 501 (1947) ..........................................................................................................................10
`
`Hilton v. Apple, Inc.,
`No. C-13-2167 EMC, 2013 WL 5487317 (N.D. Cal. Oct. 1, 2013) ...................................................7
`
`Inherent.com v. Martindale-Hubbell,
`420 F.Supp.2d 1093 (N.D. Cal. 2006) ..........................................................................................8, 10
`
`Nordson Corp. v. Speedline Techs., Inc.,
`2000 U.S. Dist. LEXIS 15240 (N.D. Cal. Oct. 6, 2000) .....................................................................9
`
`Ontel Prods., Inc. v. Project Strategies Corp.,
`899 F. Supp. 1144 (S.D.N.Y. Sept. 14, 1995) ....................................................................................9
`
`i
`ACCELERATION BAY’S MOTION TO DISMISS
`PLAINTIFF’S COMPLAINT FOR DECLARATORY JUDGMENT
`
`Case No. 3:16-cv-03375-RS
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`Case 1:16-cv-00774-RGA Document 22 Filed 07/15/16 Page 4 of 17 PageID #: 452
`
`
`Pacesetter Sys., Inc. v. Medtronic, Inc.,
`678 F.2d 93 (9th Cir.1982) .......................................................................................................6, 8, 12
`
`Regents of the U. of Cal. v. Eli Lilly & Co.,
`119 F.3d 1559 (Fed. Cir. 1997).........................................................................................................11
`
`Schwartz v. Frito–Lay N. Am.,
`No. C–12–02740 EDL, 2012 WL 8147135 (N.D. Cal. Sept. 12, 2012) .........................................6, 9
`
`Sherar v. Harless,
`561 F.2d 791 (9th Cir. 1977) ............................................................................................................10
`
`Topics Entm’t Inc. v. Rosetta Stone Ltd.,
`No. C09-1408 RSL, 2010 WL 55900 (W.D. Wash. Jan. 4, 2010) .....................................................9
`
`In re Volkswagen of Am., Inc.,
`566 F.3d 1349 (Fed. Cir. 2009).........................................................................................................11
`
`Xoxide, Inc. v. Ford Motor Co.,
`448 F.Supp.2d 1188 (C.D. Cal. July 21, 2006) ...................................................................................8
`
`Statutes
`
`28 U.S.C. §1404 ....................................................................................................................................1, 9
`
`Other Authorities
`
`Federal Rule of Civil Procedure 12(b)(3) .................................................................................................1
`
`14D Wright, A. Miller & M. Kane, Fed. Prac. & Proc. Juris. § 3823 (3d ed. 2011) ................................7
`
`
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`ACCELERATION BAY’S MOTION TO DISMISS
`PLAINTIFF’S COMPLAINT FOR DECLARATORY JUDGMENT
`
`Case No. 3:16-cv-03375-RS
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`Case 1:16-cv-00774-RGA Document 22 Filed 07/15/16 Page 5 of 17 PageID #: 453
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`
`NOTICE OF MOTION AND MOTION
`
`TO ALL PARTIES AND THEIR ATTORNES OF RECORD:
`
`
`
`PLEASE TAKE NOTICE THAT on September 1, 2016, at 1:30 p.m., or as soon thereafter as
`
`this matter may be heard by the Honorable Richard Seeborg in Courtroom 3, 17th Floor, of the above-
`entitled Court, located at 280 South 1st Street in San Jose, California 95113, Defendant Acceleration
`Bay LLC (“Acceleration Bay”) will, and hereby does, move the Court to dismiss pursuant to Fed. R.
`
`Civ. P. 12(b)(3) the Complaint for Declaratory Judgment of Non-Infringement of Activision Blizzard,
`
`Inc. (“Activision”). In the alternative, Acceleration Bay moves under 28 U.S.C. §1404 to transfer this
`
`action to the District of Delaware, where the claims at issue were first filed by Acceleration Bay over
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`a year ago.
`
`
`
`This motion is based on this Notice of Motion and Motion, the accompanying memorandum of
`
`points and authorities, the concurrently filed Declaration of Lisa Kobialka, and all other papers and
`
`arguments submitted in connection with this matter and any matters of which the Court may take
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`judicial notice.
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`ACCELERATION BAY’S MOTION TO DISMISS
`PLAINTIFF’S COMPLAINT FOR DECLARATORY JUDGMENT
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`MEMORANDUM OF POINTS AND AUTHORITIES
`
`I.
`
`INTRODUCTION
`
`This declaratory judgment action should be dismissed under the first-to-file rule because it is
`
`based on the same patent infringement issues raised by Acceleration Bay against video game
`
`publisher Activision in a complaint Acceleration Bay filed in the District of Delaware in March 2015.
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`This action should further be dismissed as it was filed by Activision in anticipation of imminent
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`litigation, and Activision’s race to the courthouse should not deprive patent owner Acceleration Bay
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`of its choice of forum to litigate its infringement claims against Activision. Finally, if this action is
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`not dismissed outright, to preserve judicial economy this action should be transferred to the District of
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`Delaware, which has been heavily involved in the litigation of these same infringement claims for
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`over a year against Activision and other video game publishers.
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`Acceleration Bay filed suit in the District of Delaware in March, 2015 against Activision for
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`infringement of Acceleration Bay’s patents (the “March 2015 Action”), and filed related actions
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`against video game publishers Electronic Arts Inc. (“EA”) and Take-Two Interactive Software, Inc.,
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`2K Sports, Inc. and Rockstar Games, Inc. (collectively “Take-Two”). Since then, the parties have
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`engaged in extensive discovery and begun the claim construction process. Judge Andrews of the
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`District of Delaware and court-appointed Special Master Allen Terrell have expended considerable
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`resources on the March 2015 Action and the related cases, holding multiple hearings and issuing
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`orders on a variety of substantive issues, thereby acquiring substantial experience with these patents.
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`Judge Andrews recently found that Acceleration Bay lacked prudential standing to pursue its
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`claims against Activision without the joinder of assignor the Boeing Company, and gave Acceleration
`Bay until June 17, 2016 to cure prudential standing. On June 16, 2016, before the deadline to cure
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`standing and while the March 2015 Action was still pending, Activision filed this action (Activision’s
`
`“DJ Action”), seeking declaratory judgment of non-infringement of the exact same patents at issue in
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`the March 2015 Action and asserting the same non-infringement defense it asserted in the March 2015
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`Action. The next day, which was within the period for Acceleration Bay to cure prudential standing,
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`Acceleration Bay informed Judge Andrews that, rather than join Boeing as a party, Acceleration Bay
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`2
`ACCELERATION BAY’S MOTION TO DISMISS
`PLAINTIFF’S COMPLAINT FOR DECLARATORY JUDGMENT
`
`Case No. 3:16-cv-03375-RS
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`

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`Case 1:16-cv-00774-RGA Document 22 Filed 07/15/16 Page 7 of 17 PageID #: 455
`
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`and Boeing entered into a revised patent purchase agreement that cured prudential standing.
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`Acceleration Bay requested that Judge Andrews dismiss the March 2015 Action without prejudice,
`and refiled its claims against Activision (the “Delaware Action”).1
`Acceleration Bay’s infringement claims should be resolved before the District of Delaware.
`
`Acceleration Bay chose to file its claims in that court in early 2015. Activision never challenged the
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`jurisdiction or convenience of the District of Delaware, and aggressively litigated its case in the
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`District of Delaware, filing multiple motions to dismiss and discovery motions, and asserting the same
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`defense of non-infringement it now raises before this Court. Over the past year, the District of
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`Delaware has invested substantial resources and developed expertise in the litigation of these claims
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`and the similar infringement claims Acceleration Bay asserted against EA and Take-Two.
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`Activision’s litigation strategy, since Acceleration Bay filed the March 2015 Action, has been
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`to stall Acceleration Bay’s pursuit of remedies, requiring Acceleration Bay to seek relief from Judge
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`Andrews and the Special Master on multiple occasions. At the time Judge Andrews dismissed the
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`March 2015 Action without prejudice, the parties were in the middle of discovery, Acceleration Bay
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`had twice deposed Activision and there were additional depositions on the calendar for the upcoming
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`weeks, and the parties were exchanging claim construction positions. Activision’s decision to file this
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`DJ Action before the close of Acceleration Bay’s period to cure standing is an attempt to restart the
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`case in a new court, unfamiliar with the Acceleration Bay Patents and without a schedule in place,
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`rather than continue with discovery before the District of Delaware, to further delay the prosecution of
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`Acceleration Bay’s claims. Such gamesmanship should not be countenanced, and the DJ Action
`
`should be dismissed or transferred to the District of Delaware.
`
`
`
`
`
` 1
`
` EA and Take-Two filed substantially similar declaratory judgment actions before this Court on the
`same date. 3:16-cv-03378-RS and 3:16-03377-RS. The Court related all three cases. Dkt. No. 14.
`Acceleration Bay filed motions to dismiss or transfer the Take-Two and EA declaratory judgment
`actions on the same grounds set forth herein.
`
`3
`ACCELERATION BAY’S MOTION TO DISMISS
`PLAINTIFF’S COMPLAINT FOR DECLARATORY JUDGMENT
`
`Case No. 3:16-cv-03375-RS
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`Case 1:16-cv-00774-RGA Document 22 Filed 07/15/16 Page 8 of 17 PageID #: 456
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`II.
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`STATEMENT OF ISSUES TO BE DECIDED
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`(1) If the DJ Action should be dismissed under the first-to-file rule in favor of Acceleration
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`Bay’s claims filed in the District of Delaware more than one year ago?
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`(2) If the DJ Action should be dismissed in favor of the Delaware Action because Activision
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`filed it in anticipation of litigation and to frustrate Acceleration Bay’s choice of forum?
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`(3) If the DJ Action is not dismissed outright, should it be transferred to the District of
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`Delaware to preserve judicial economy in view of that court’s extensive experience with litigation of
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`these same infringement claims?
`III.
`
`STATEMENT OF FACTS
`A.
`Acceleration Bay is an incubator for next generation businesses, in particular for companies
`
`Parties
`
`that focus on delivering information and content in real-time. Declaration of Lisa Kobialka in
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`Support of Acceleration Bay’s Motion to Dismiss or Transfer (“Kobialka Decl.”) filed herewith, ¶ 3,
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`Ex. 2 at ¶ 2 (Complaint in March 2015 Action). Acceleration Bay invests in companies that further
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`the dissemination of technological advancement. Id. Acceleration Bay also collaborates with
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`inventors and research institutions to analyze and identify important technological problems, generate
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`new solutions to these problems, and bring those solutions to market through its partnerships with
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`existing companies and startups. Id. at ¶ 3. Acceleration Bay is a Delaware limited liability
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`corporation, with its principal place of business at 370 Bridge Parkway, Redwood City, California.
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`Id. at ¶ 1.
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`Activision publishes World of Warcraft, Destiny, Call of Duty: Advanced Warfare and Call of
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`Duty: Black Ops III, which infringe Acceleration Bay’s patents. Kobialka Decl., ¶ 2, Ex. 1 at ¶ 6.
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`Activision is a Delaware corporation with its principal place of business at 3100 Ocean Park
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`Boulevard, Santa Monica, California 90405. Id. at ¶ 5. Third party Bungie developed Destiny, and is
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`a Delaware corporation located in Bellevue, Washington. Kobialka Decl., ¶ 13, Ex. 9 at ¶¶ 12, 13.
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`4
`ACCELERATION BAY’S MOTION TO DISMISS
`PLAINTIFF’S COMPLAINT FOR DECLARATORY JUDGMENT
`
`Case No. 3:16-cv-03375-RS
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`Acceleration Bay First Filed its Claims Against Activision in Early 2015
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`B.
`On March 11, 2015, Acceleration Bay filed the March 2015 Action in the District of
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`Delaware, alleging that Activision infringes various patents owned by Acceleration Bay. Kobialka
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`Decl., ¶ 3, Ex. 2. Acceleration Bay filed complaints against EA and Take-Two on March 30 and
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`April 13, 2015, alleging infringement of the same patents. Id., ¶ 4. The three Delaware actions were
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`related for discovery, claim construction and pre-trial activities. Id., ¶ 5. Discovery began in
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`December 2015, and the parties have since engaged in extensive document and interrogatory
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`discovery. Id. Acceleration Bay served initial infringement contentions on Activision on March 2,
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`2016, and Activision served invalidity contentions on May 6, 2016. Id., ¶¶ 6-7, Exs. 3-4. Activision
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`has asserted the same non-infringement defense it now raises in the DJ Action. Judge Andrews and
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`Special Master Terrell together held at least six hearings and issued over ten substantive orders
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`concerning a variety of issues, including discovery disputes, infringement contentions, scheduling,
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`case management and standing. Id., ¶ 8.
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`On June 3, 2016, Judge Andrews found that Acceleration Bay lacked prudential standing to
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`maintain its claims against Activision without joining Boeing, and gave Acceleration Bay until June
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`17, 2016 to cure prudential standing. Id., ¶ 9, Ex. 5. On June 16, 2016, while the March 2015 Action
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`was still pending, while Activision was actively asserting the defense of non-infringement before the
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`District of Delaware and before the deadline to cure prudential standing, Activision filed the DJ Action
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`in this Court. Dkt. No. 1. By its own admission, the DJ Action seeks “declaratory judgment of non-
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`infringement of patents that Acceleration [Bay] has asserted against [Activision] in district court
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`proceedings before the United States District Court for the District of Delaware. Dkt. No. 1 at ¶ 1.
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`The DJ Action does not raise any claims or defenses not already at issue in the March 2015 Action.
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`See id.
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`On June 17, 2016, before Acceleration Bay was served with the DJ Action complaint and
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`during the period to cure standing, Acceleration Bay informed Judge Andrews that, rather than join
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`Boeing as a party, Acceleration Bay cured prudential standing by entering into an amended patent
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`purchase agreement with Boeing. Kobialka Decl., ¶ 10, Ex. 6. Acceleration Bay requested dismissal
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`5
`ACCELERATION BAY’S MOTION TO DISMISS
`PLAINTIFF’S COMPLAINT FOR DECLARATORY JUDGMENT
`
`Case No. 3:16-cv-03375-RS
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`

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`Case 1:16-cv-00774-RGA Document 22 Filed 07/15/16 Page 10 of 17 PageID #: 458
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`without prejudice of the March 2015 Action, and refiled its claims against Activision that day in the
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`Delaware Action. Id., ¶ 2, Ex. 1. On June 20, 2016, Judge Andrews granted Acceleration Bay’s
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`request, and dismissed the March 2015 Action without prejudice in favor of the Delaware Action. Id.,
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`¶ 11, Ex. 7. Thus, Acceleration Bay’s patent infringement claims against Activision have been
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`pending continuously before Judge Andrews since March 2015.
`IV. ARGUMENT
`The DJ Action Should Be Dismissed in Favor of the Delaware Action
`A.
`
`1.
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`The First-To-File Rule Mandates Dismissal of Activision’s Later Filed DJ
`Action.
`Activision’s DJ Action should be dismissed under the “first-to-file” rule. The DJ Action seeks
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`resolution of the same infringement allegations at issue in the Delaware Action, which have been
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`pending continuously since March 2015. Indeed, on the day Activision filed the DJ Action, it was
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`continuing to pursue the exact same defense of non-infringement in the then-pending March 2015
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`Action. Allowing both actions to proceed at the same time would create a risk of duplicative litigation
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`and conflicting judgments. Diablo Techs., Inc. v. Netlist, Inc., No. 13-CV-3901-YGR, 2013 WL
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`5609321, at *3 (N.D. Cal. Oct. 11, 2013) (“The [first-to-file] rule is primarily meant to alleviate the
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`burden placed on the federal judiciary by duplicative litigation and to prevent the possibility of
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`conflicting judgments.”) (citation omitted). Accordingly, Acceleration Bay respectfully requests that
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`the Court exercise its discretion to decline to hear Activision’s duplicative declaratory judgment
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`claims. See Cisco Sys., Inc. v. TiVo, Inc., No. C 12-02766 RS, 2012 WL 3279532, at *3 (N.D. Cal.
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`Aug. 10, 2012) (“The Declaratory Judgment Act permits courts the discretion to decline jurisdiction
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`over declaratory judgment claims”); see also Pacesetter Sys., Inc. v. Medtronic, Inc., 678 F.2d 93, 94–
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`95 (9th Cir.1982) (holding that a federal district court has discretion to dismiss, stay, or transfer a case
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`to another district court under the first-to-file rule); Alltrade, Inc. v. Uniweld Prods. Inc., 946 F.2d 622,
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`628 (9th Cir. 1991) (“The most basic aspect of the first-to-file rule is that it is discretionary.”).
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`Acceleration Bay was the first-to-file. In determining whether the first-to-file rule applies and,
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`if so, which action is considered the first-filed, courts generally examine the following factors: (1)
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`6
`ACCELERATION BAY’S MOTION TO DISMISS
`PLAINTIFF’S COMPLAINT FOR DECLARATORY JUDGMENT
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`Case No. 3:16-cv-03375-RS
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`Case 1:16-cv-00774-RGA Document 22 Filed 07/15/16 Page 11 of 17 PageID #: 459
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`chronology of the actions; (2) similarity of the parties; and (3) similarity of the issues. Schwartz v.
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`Frito–Lay N. Am., No. C–12–02740 EDL, 2012 WL 8147135, at *2 (N.D. Cal. Sept. 12, 2012).
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`“When two actions involving nearly identical parties and closely related patent infringement questions
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`are filed in separate districts,” as is the case here, “the general rule is that the case first filed takes
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`priority, and the subsequently filed suit should be dismissed or transferred or stayed.” Google Inc., v.
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`Eolas Techs. Inc., No. 15-CV-05446-JST, 2016 WL 3346529, at *7 (N.D. Cal. June 16, 2016) (quoting
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`14D Wright, A. Miller & M. Kane, Fed. Prac. & Proc. Juris. § 3823 (3d ed. 2011)) (citation and
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`internal quotations omitted). Here, Acceleration Bay asserted the infringement allegations at issue in
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`the March 2015 Action, well over a year before Activision filed the DJ Action, and Activision asserted
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`the same non-infringement defense in both actions.
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`That Acceleration Bay refiled its claims to cure a purported procedural defect does not change
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`the fact that they were filed more than one year before the DJ Action. See Adobe Sys. Inc., v. Bargain
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`Software Shop, LLC, No. 14-CV-3721-EMC, 2014 WL 6982515 (N.D. Cal. Dec. 8, 2014). In Adobe,
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`the Court faced the same scenario, and found that where a first filed action was dismissed without
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`prejudice on a procedural ground (in that case, due to misjoinder of a party) and then promptly refiled,
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`the refiled case was deemed to have been first filed, even though it was filed after an intervening
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`declaratory judgment action. Id. at *2 (“On the unique procedural facts of this dispute—the nature of
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`the Colorado Internet dismissal, the conduct of the parties following that dismissal, and the fact that
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`this Court has formally related this case to the Colorado Internet action—the Court finds that this
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`action is the ‘earlier filed action’ based on the ‘dictates of sound judicial administration.’”).
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`Courts have also held that “[a]n action is considered to have been first filed, even if it was not
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`chronologically first, if the claims relate back to an original complaint that was chronologically filed
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`first.” Barnes & Noble, Inc., 823 F.Supp.2d 980, 987 (N.D. Cal. 2011) (citation omitted); see also
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`Hilton v. Apple, Inc., No. C-13-2167 EMC, 2013 WL 5487317, at *2-11 (N.D. Cal. Oct. 1, 2013)
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`(finding a plaintiff was to first-to-file over a later-filed suit even though plaintiff’s complaint was
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`dismissed for lack of standing and the second and third amended complaints were filed after the later-
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`filed complaint). “A number of courts have held that the filing of a complaint triggers the first-filed
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`7
`ACCELERATION BAY’S MOTION TO DISMISS
`PLAINTIFF’S COMPLAINT FOR DECLARATORY JUDGMENT
`
`Case No. 3:16-cv-03375-RS
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`

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`Case 1:16-cv-00774-RGA Document 22 Filed 07/15/16 Page 12 of 17 PageID #: 460
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`rule, regardless of whether the plaintiff later amends the complaint.” Barnes & Noble, 823 F.Supp.2d
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`at 987.
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`Accordingly, here, Acceleration Bay’s Delaware Action is deemed first filed because it relates
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`back to the March 2015 Action, which was still pending when Activision filed the DJ Action. The DJ
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`Action should therefore be dismissed as the later-filed action. See Pacesetter, 678 F.2d at 97
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`(affirming the dismissal of later-filed action for patent infringement under the first-to-file rule).
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`2.
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`The DJ Action Should Be Dismissed As Activision Filed it in Anticipation of
`Litigation and to Frustrate Acceleration Bay’s Choice of Venue.
`The Court should dismiss the DJ Action in favor of the Delaware Action for the additional
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`reasons that it was filed in anticipation of litigation and to prevent Activision from frustrating
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`Acceleration Bay’s choice of venue. Elecs. for Imaging, Inc. v. Coyle, 394 F.3d 1341, 1345 (Fed. Cir.
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`2005) (holding that a declaratory judgment action filed to preempt another’s infringement suit should
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`be dismissed). “[T]he Court may, in its discretion, rely on equitable grounds, such as ‘when the filing
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`of the first suit evidences bad faith, anticipatory suit, or forum shopping,’ to determine whether to
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`depart from the first to file rule.” Xoxide, Inc. v. Ford Motor Co., 448 F.Supp.2d 1188, 1192 (C.D.
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`Cal. July 21, 2006) (citing Inherent.com v. Martindale-Hubbell, 420 F.Supp.2d 1093, 1097 (N.D. Cal.
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`2006)) (emphasis omitted). “[C]ircumstances under which an exception to the first-to-file rule
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`typically will be made include bad faith, anticipatory suit, and forum shopping…[D]istrict court judges
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`can, in the exercise of their discretion, dispense with the first-filed principle for reasons of equity.”
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`Alltrade, Inc. v. Uniwald Prods., Inc., 946 F.2d 622, 628 (9th Cir. 1991) (internal citations omitted).
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`Here, the DJ Action should be dismissed as Activision attempted to preempt Acceleration
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`Bay’s choice of venue. Acceleration Bay chose to assert its patent infringement claims against
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`Activision in the District of Delaware. Activision never challenged the Delaware Court’s jurisdiction
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`(nor could it, as Activision is a Delaware corporation), and never sought to transfer the action out of
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`Delaware. Activision filed the DJ Action before the close of the cure period for Acceleration Bay and
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`before dismissal of the March 2015 Action, plainly anticipating that Acceleration Bay would refile its
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`8
`ACCELERATION BAY’S MOTION TO DISMISS
`PLAINTIFF’S COMPLAINT FOR DECLARATORY JUDGMENT
`
`Case No. 3:16-cv-03375-RS
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`claims before the District of Delaware and trying to avoid the continuation of litigation before that
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`court.
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`Courts have recognized that the less than one day difference between the filing date of the DJ
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`Action and the Delaware Action supports relaxing the first-to-file rule (which should not even be an
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`issue, given that the Delaware Action is a continuation of the much earlier filed March 2015 Action),
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`further warranting dismissal of the DJ Action. See, e.g., Nordson Corp. v. Speedline Techs., Inc., 2000
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`U.S. Dist. LEXIS 15240, at *7 (N.D. Cal. Oct. 6, 2000) (first-to-file rule “not dispositive” where
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`parties filed suits within three hours of each other); see also Aurora Corp. of Am. v. Fellowes, Inc., No.
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`CV-07-8306-GHK (AJWx), 2008 WL 709198, at *1 (C.D. Cal. Feb. 27, 2008) (where parties filed
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`nearly simultaneous lawsuits, application of first-to-file rule “would invoke none of the merits of the
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`first-filed rule, while promoting the sort of race to the courthouse that is the worst feature of the rule” );
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`Topics Entm’t Inc. v. Rosetta Stone Ltd., No. C09-1408 RSL, 2010 WL 55900, at *4 (W.D. Wash. Jan.
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`4, 2010) (“[T]he fact that the suits were filed only two hours apart supports the Court’s decision to
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`depart from the first-to-file rule”); Ontel Prods., Inc. v. Project Strategies Corp., 899 F. Supp. 1144,
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`1153 (S.D.N.Y. Sept. 14, 1995) (first-to-file rule is “usually disregarded where the competing suits
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`were filed merely days apart”). Thus, the fact that the DJ Action was filed less than one day before the
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`Delaware Action weighs in favor of dismissing the DJ Action, rather than crediting it as a truly first-
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`filed action (especially in view of the fact that the Delaware Action is a continuation of the much
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`earlier filed March 2015 Action).
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`B.
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`To the Extent it is Not Dismissed, the DJ Action Should Be Transferred to the
`District of Delaware
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`To the extent the DJ Action is not dismissed in view of the Delaware Action, it should be
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`transferred to the District of Delaware to preserve judicial resources. The Court has discretion to order
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`transfer under 28 U.S.C. § 1404(a) “to any other district or division where it might have been brought”
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`“in the interest of justice.” Schwartz, 2012 WL 8147135, at *4 (transferring under the first-to-file rule
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`and 28 U.S.C. § 1404(a)). Determining whether an action should be transferred pursuant to § 1404(a)
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`is a two-step process. The transferor court must first determine whether the action “might have been
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`9
`ACCELERATION BAY’S MOTION TO DISMISS
`PLAINTIFF’S COMPLAINT FOR DECLARATORY JUDGMENT
`
`Case No. 3:16-cv-03375-RS
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`

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`Case 1:16-cv-00774-RGA Document 22 Filed 07/15/16 Page 14 of 17 PageID #: 462
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`brought” in the transferee court, and then the court must make an “individualized, case-by-case
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`consideration of convenience and fairness.” See Inherent.com, 420 F.Supp.2d at 1098 (citations
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`omitted).
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`Here, there is no question that the DJ Action could have been brought in the Distr