Case 1:16-cv-02690-AT Document 10-7 Filed 12/10/15 Page 1 of 4
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`Exhibit F
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`Case 2:13-cv-01065-JRG Document 29 Filed 05/16/14 Page 1 of 3 PageID #: 695Case 1:16-cv-02690-AT Document 10-7 Filed 12/10/15 Page 2 of 4
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`IN THE UNITED STATES DISTRICT
`COURT FOR THE EASTERN DISTRICT
`OF TEXAS MARSHALL DIVISION
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`RPOST HOLDINGS, INC. and RPOST
`COMMUNICATIONS LIMITED,
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`v.
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`TREND MICRO INCORPORATED,
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`Plaintiffs,
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`Defendant.
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` CASE NO.: 2:13-CV-1065
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`ORDER GRANTING-IN-PART DEFENDANT’S
`MOTION TO DISMISS OR TO TANSFER VENUE
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`I.
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`Introduction and Background
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`Plaintiffs RPost Holdings, Inc. and RPost Communications Limited (collectively,
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`“RPost”) filed this action against Defendant Trend Micro Incorporated (“Trend Micro”) on
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`December 9, 2013, alleging infringement of six patents—U.S. Patent Nos. 8,504,628 (“the ’628
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`patent”), 8,484,706 (“the ’706 patent”), 8,468,199 (“the ’199 patent”) 8,224,913 (“the ’913
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`patent”), 8,209,389 (“the ’389 patent”), and 7,660,989 (“the ’989 patent”). See RPost’s
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`Complaint (Dkt. No. 1). Additionally, it is undisputed that Trend Micro filed a declaratory
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`judgment action against RPost in the Northern District of California (NDCA) on November 11,
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`2013, Trend Micro Incorporated v. RPost Holdings, Inc., et al., No. 13-cv-5227. In the NDCA
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`1
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`Case 2:13-cv-01065-JRG Document 29 Filed 05/16/14 Page 2 of 3 PageID #: 696Case 1:16-cv-02690-AT Document 10-7 Filed 12/10/15 Page 3 of 4
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`action, Trend Micro seeks a declaration of non-infringement and invalidity with respect to four
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`of the six patents asserted in this action.1
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`Now before the Court is Trend Micro’s Motion to Dismiss or Transfer (Dkt. No. 10). For
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`the reasons stated herin, Trend Micro’s motion is GRANTED-IN-PART, as set forth below.
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`II. Analysis
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`When confronted with substantially similar declaratory judgment and patent infringement
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`actions filed in different jurisdictions, courts generally favor “the forum of the first-filed action,
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`whether or not it is a declaratory action.” Genentech v. Eli Lilly & Co., 998 F.2d 931, 938 (Fed.
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`Cir. 2008). Courts typically enforce this first-to-file rule “absent sound reason for a change of
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`forum.” Id.; see also Elecs. for Imaging, Inc. v. Coyle, 394 F.3d 1341, 1347 (Fed. Cir. 2005).
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` “In determining whether to apply the first-to-file rule to an action, a court must resolve
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`two questions: 1) are the two pending actions so duplicative or involve substantially similar
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`issues that one court should decide the subject matter of both actions; and 2) which of the two
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`courts should take the case?” Texas Instruments, Inc. v. Micron Semiconductor, Inc., 815 F.
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`Supp. 994, 997 (E.D. Tex. 1993). However, once the “substantial similarity” threshold is
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`crossed, the first-to-file rule gives the first-filed court the responsibility to determine which case
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`should proceed. Id. at 999.
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`RPost does not contest the fact that: (1) this action and the NDCA action are substantially
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`similar; and (2) the NDCA action is the first-filed. Accordingly, the NDCA is charged with
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`determining which action should go forward. Id. It has obviously done so by previously
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`denying RPost’s motion to transfer the NDCA declaratory judgment action to this Court. Trend
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` The ’389, ’913, ’199, and ’628 patents.
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`2
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`Case 2:13-cv-01065-JRG Document 29 Filed 05/16/14 Page 3 of 3 PageID #: 697Case 1:16-cv-02690-AT Document 10-7 Filed 12/10/15 Page 4 of 4
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`Micro Inc. v. RPost Holdings, Inc., 2014 U.S. Dist. LEXIS 47946 (N.D. Cal. Apr. 7, 2014). In
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`doing so, the NDCA has rejected the same arguments RPost advances in opposition to Trend
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`Micro’s motion. Id. at *26-36.
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`Considering the action taken by our sister court in the NDCA, “this Court simply may
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`not, consistent with the principles of comity and conservation of judicial resources, usurp the
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`first-filed court’s role.” Texas Instruments, 815 F. Supp. at 999; see also Cadle Co. v.
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`Whataburger of Alice, 174 F.3d 599, 605-606 (5th Cir. 1999) (“Once the likelihood of a
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`substantial overlap between the two suits has been demonstrated, it [is] was no longer up to the
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`[second filed court] to resolve the question of whether both should be allowed to proceed.”)
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`(internal quotations and citation omitted).
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`The only question remaining for this Court is whether to dismiss the case or transfer it to
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`the NDCA. This action and the NDCA action are not identical, despite their substantial
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`similarity. Such reality persuades this Court that the concurrent resolution of both the
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`declaratory judgment and infringement actions in the first-filed court will best conserve judicial
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`resources and promote efficiency. Accordingly, this Court concludes that transfer is the most
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`appropriate disposition.
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`III. Conclusion
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`For the reasons stated above, Trend Micro’s Motion is GRANTED-IN-PART. It is
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`ORDERED that the above cause of action is hereby TRANSFERRED to the United States
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`District Court for the Northern District of California. The Clerk shall file this Order in the above
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`case and shall forthwith take such steps as are needed to effect this transfer.
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`3
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