Case 6:19-cv-00273-ADA Document 13 Filed 05/15/19 Page 1 of 24
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`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`PACT XPP SCHWEIZ AG
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`INTEL CORPORATION,
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`Defendant.
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`Plaintiff,
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`v.
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`C.A. No. 6:19-cv-00273-ADA
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`INTEL CORPORATION’S MOTION TO DISMISS, STAY, OR TRANSFER
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`PACT - Ex. 2024.0001
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`Case 6:19-cv-00273-ADA Document 13 Filed 05/15/19 Page 2 of 24
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`TABLE OF CONTENTS
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`I.
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`INTRODUCTION .............................................................................................................. 1
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`II.
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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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`PACT filed this complaint in anticipation of Intel’s forthcoming motion to
`transfer the Delaware Case to a more convenient forum. ....................................... 3
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`Neither PACT nor the asserted patents have any connection to Texas. ................. 5
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`Intel is headquartered in California and relevant evidence is located there. .......... 6
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`III.
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`LEGAL STANDARD ......................................................................................................... 8
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`IV.
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`ARGUMENT .................................................................................................................... 10
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`A.
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`B.
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`Dismissal is warranted because PACT’s bad faith, anticipatory filing, and
`forum-shopping negate the first-to-file rule. ......................................................... 10
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`The interests of justice also favor transfer to the Northern District of
`California. ............................................................................................................. 13
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`1.
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`2.
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`3.
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`PACT could have brought this case in the Northern District of
`California. ................................................................................................. 14
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`The private-interest factors favor transfer to the Northern District
`of California. ............................................................................................. 14
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`The public-interest factors also favor transfer to the Northern
`District of California. ................................................................................ 18
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`V.
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`CONCLUSION ................................................................................................................. 19
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`i
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`PACT - Ex. 2024.0002
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`Case 6:19-cv-00273-ADA Document 13 Filed 05/15/19 Page 3 of 24
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
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`Altera Corp. v. PACT XPP Techs., AG,
`Civil Action No. 3:14-cv-02868-JD (N.D. Cal.) .......................................................................8
`
`Battee v. Ben E. Keith Co.,
`No. 17-0161, 2017 WL 1832043 (E.D. Tex. May 5, 2017) .....................................................17
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`DataQuill, Ltd. v. Apple Inc., No. A-13-CA-706-SS, 2014 WL 2722201
`(W.D. Tex. June 13, 2014) ............................................................................................... passim
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`Elecs. for Imaging, Inc. v. Coyle,
`394 F.3d 1341 (Fed. Cir. 2005)........................................................................................8, 9, 13
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`Exxon Chem. Patents, Inc. v. Lubrizol Corp.,
`935 F.2d 1263 (Fed. Cir. 1991) (Newman, J. concurring).......................................................10
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`In re Genentech, Inc.,
`566 F.3d 1338 (Fed. Cir. 2009)..........................................................................................15, 16
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`Godo Kaisha IP Bridge 1 v. Intel Corp.,
`Case No. 2:17-CV-00676-RWS-RSP, D.I. 157, slip op.
`(E.D. Tex. Sept. 28, 2018) .......................................................................................................17
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`Godo Kaisha IP Bridge 1 v. Xilinx, Inc.,
`No. 17-100, 2017 WL 4076052 (E.D. Tex. Sept. 14, 2017) ....................................................17
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`In re Hoffmann-La Roche Inc.,
`587 F.3d 1333 (Fed. Cir. 2009)................................................................................................19
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`Intel Corp. v. PACT XPP Schweiz AG,
`C.A. No. 3:19-cv-02241-WHA (N.D. Cal.) .....................................................................1, 4, 10
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`Micron Tech., Inc. v. Mosaid Techs., Inc.,
`518 F.3d 897 (Fed. Cir. 2008)....................................................................................................9
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`Neil Bros. Ltd v. World Wide Lines, Inc.,
`425 F. Supp. 2d 325 (E.D.N.Y. 2006) .....................................................................................15
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`PACT XPP Schweiz AG v. Intel Corp.,
`D.I. 1, C.A. No. 19-267 (RGA) (D. Del.) ........................................................................ passim
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`PACT XPP Techs., AG v. Xilinx,
`Case No. 2:07-cv-563-RSP (E.D. Tex.) .....................................................................................8
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`ii
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`PACT - Ex. 2024.0003
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`Case 6:19-cv-00273-ADA Document 13 Filed 05/15/19 Page 4 of 24
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`PPS Data, LLC v. Diebold, Inc.,
`No. 2:12:-cv-TC, 2012 WL 1884655 (D. Utah May 22, 2012) ...............................9, 11, 12, 13
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`Raz Imports, Inc. v. Luminara Worldwide, LLC,
`No. 3:15-cv-02223-M, 2015 WL 6692107 (N.D. Tex. Nov. 3, 2015) ................................8, 11
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`Serco Servs. Co., L.P. v. Kelley Co.,
`51 F.3d 1037 (Fed. Cir. 1995)........................................................................................8, 10, 11
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`Sport Supply Grp., Inc. v. R&G Prods., Inc.,
`No. 3:08-cv-02031-O, 2009 WL 10677398 (N.D. Tex. Sept. 30, 2009) .................................11
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`Valeo, Inc. v. Fed.-Mogul Corp.,
`No. EP-13-CV-115-PRM, 2013 WL 8480673 (W.D. Tex. Oct. 17, 2013) .............9, 10, 15, 18
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`In re Volkswagen of Am., Inc.,
`545 F.3d 304 (5th Cir. 2008) (en banc) ........................................................................... passim
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`Ward v. Follett Corp.,
`158 F.R.D. 645 (N.D. Cal. 1994) .............................................................................................13
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`Wells Fargo Bank, N.A. Tr. for Natividad Caballero 2007 Ins. Tr. v. Principal
`Life Ins. Co., No. CV-09-00068-DDP (RZX), 2009 WL 10671947
`(C.D. Cal. Apr. 22, 2009).........................................................................................................11
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`Statutes
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`28 U.S.C. § 1400(b) .......................................................................................................................14
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`28 U.S.C. § 1404 ..............................................................................................................................8
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`28 U.S.C. § 1404(a) ............................................................................................................... passim
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`Rules
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`Fed. R. Civ. P. 12(b)(1)....................................................................................................................1
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`Fed. R. Civ. P. 12(b)(3)....................................................................................................................1
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`Fed. R. Civ. P. 12(b)(6)....................................................................................................................1
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`iii
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`PACT - Ex. 2024.0004
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`Case 6:19-cv-00273-ADA Document 13 Filed 05/15/19 Page 5 of 24
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`Pursuant to Federal Rule of Civil Procedure 12(b)(1), 12(b)(3), and 12(b)(6) and 28
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`U.S.C. § 1404(a), Defendant Intel Corporation (“Intel”), by and through its counsel, moves to
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`dismiss, or in the alternative, stay or transfer this case (the “Texas Case”) in favor of Intel’s co-
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`pending declaratory judgment action against PACT XPP Schweiz AG (“PACT”) in the Northern
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`District of California (the “California Case”) involving the same 12 patents asserted here.
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`I.
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`INTRODUCTION
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`This District was not PACT’s preferred forum. PACT originally sued Intel in Delaware
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`(the “Delaware Case”) on the same 12 patents asserted here. Only after learning that Intel
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`intended to move for transfer to a more convenient forum near its engineering facilities in
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`Oregon did PACT suddenly abandon its Delaware Case to file in Texas—a transparent attempt to
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`thwart Intel’s transfer. Intel promptly filed the California Case to secure a more convenient
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`forum, but this time near its headquarters in the Northern District of California where PACT is
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`subject to personal jurisdiction. PACT maintains that its “first filed” Texas action—filed merely
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`one day before the California Case—should control. But PACT’s tactical end-run around
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`convenience should not be rewarded, and the “first filed” rule it relies on does not apply in cases
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`of forum shopping. Intel respectfully asks this Court to dismiss, stay, or transfer this case to the
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`Northern District of California, where Intel is headquartered, and where Intel’s declaratory
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`judgment action on the same 12 PACT asserted patents is currently pending.
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`There is no question PACT filed this case based on an improper forum shopping motive:
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` When it filed the Texas Case, PACT already had a pending case against Intel,
`initiated three months earlier in Delaware, alleging the exact same claims;
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`Intel informed PACT that it intended to file a motion to transfer the Delaware Case to
`Oregon because, in part, it would be far more convenient and efficient to litigate this
`case near Intel’s engineering facilities there and because PACT and the dispute have
`no connection to Delaware;
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`1
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`
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`PACT - Ex. 2024.0005
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` Just hours after Intel informed PACT of its intent to move to transfer the Delaware
`Case, and without any prior notice to Intel, PACT filed its duplicative complaint here
`while its Delaware Case was pending; and
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` Once its duplicative Texas complaint was on file, PACT, with no advance notice to
`Intel, dismissed its Delaware Case.
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`PACT knew that Intel’s forthcoming motion to transfer the Delaware Case to Oregon had
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`merit. PACT, a Swiss company, has no ties to Delaware (or Texas) and Intel’s relevant
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`employee witnesses and relevant documents are largely located on the West Coast, where Intel
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`has major facilities in Oregon and California. PACT’s actions in filing this case and later
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`dismissing the Delaware Case were deliberate, undertaken for the improper purpose of
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`preventing the Delaware court from transferring the Delaware Case to a more convenient forum.1
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`Intel has litigated other patent cases in this District without objection, as well as in other
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`districts across the country, when appropriate under the facts of those cases. Indeed, Intel has an
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`R&D facility in Austin, employs numerous Western District of Texas residents, pays taxes here,
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`and it is proud of its relationship with the Western District. But for this dispute, the far more
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`convenient forum is on the West Coast. The Federal Circuit, Fifth Circuit, and other courts,
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`including several from this District, that have considered similar facts are clear on this point. As
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`soon as Intel learned of PACT’s improper actions, it filed a declaratory judgment action against
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`PACT the next day—asserting non-infringement of the same patents and an additional breach of
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`contract claim—in the Northern District of California. The Northern District of California
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`(Judge Alsup) has set a case management conference for August 1, 2019, and entered an order
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`indicating that Intel should be prepared to promptly provide discovery concerning its accused
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`products as a declaratory judgment plaintiff. Intel is ready to proceed in that action and
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`respectfully asks this Court to reject PACT’s forum shopping attempt by either dismissing or
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`1 PACT, as a foreign patent licensing company, has very little footprint in the United States.
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`2
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`PACT - Ex. 2024.0006
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`Case 6:19-cv-00273-ADA Document 13 Filed 05/15/19 Page 7 of 24
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`staying this case, or alternatively transferring it to the Northern District of California, where
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`Intel’s declaratory judgment action is pending and where the convenience of the parties,
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`witnesses, and the interests of justice will be served.
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`II.
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`STATEMENT OF FACTS
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`A.
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`PACT filed this complaint in anticipation of Intel’s forthcoming motion to
`transfer the Delaware Case to a more convenient forum.
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`On February 7, 2019, PACT filed a patent infringement suit against Intel in the District of
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`Delaware, alleging infringement of 12 patents. PACT XPP Schweiz AG v. Intel Corp., D.I. 1,
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`C.A. No. 19-267 (RGA) (D. Del.) (the “Delaware Case”). On April 9, the parties stipulated to an
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`extension for Intel to answer PACT’s complaint by April 29, and as is typical with such
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`extensions, Intel agreed to answer the complaint on the deadline and not further delay initiation
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`and progress of the case on the merits with a motion to dismiss. Ex. 1 (“this email confirms our
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`agreement to stipulate to an additional 2 weeks to answer the complaint. Michael and Brian
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`[PACT’s Delaware counsel], I [PACT’s national counsel] authorized Jack [Intel’s Delaware
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`counsel] to so represent to the Court since Intel will be answering not moving in response to the
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`Complaint.”).2 Importantly, Intel did not waive its right to file all motions in the case in
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`exchange for an extension, including a motion to transfer for convenience, which can generally
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`be brought at any time.
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`Approximately one week before Intel’s deadline to answer, Intel met and conferred with
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`PACT regarding its intent to file a motion to transfer venue to the District of Oregon pursuant to
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`28 U.S.C. § 1404(a), along with Intel’s answer. As part of that meet and confer, Intel asked
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`whether PACT would oppose Intel’s transfer motion. PACT indicated it would oppose the
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`2 All cited exhibits are to the supporting declaration of Sharre Lotfollahi, filed concurrently
`herewith.
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`3
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`PACT - Ex. 2024.0007
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`Case 6:19-cv-00273-ADA Document 13 Filed 05/15/19 Page 8 of 24
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`motion, expressing a belief that Intel had agreed “there would be an answer filed not a motion to
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`transfer in return for last stipulation.” Ex. 2. Intel disagreed with PACT’s stated understanding
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`of the parties’ agreement—because Intel had waived its right to file a motion to dismiss, not all
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`motions—and replied that “Intel will file an answer. The motion to transfer will not be in lieu of
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`an answer.” Id.
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`Intel received no response from PACT. Instead, just hours after the meet and confer,
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`PACT filed an identical complaint in this Court asserting the exact same claims at issue in
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`Delaware. See D.I. 1 ¶ 2. Then, around 3:00 a.m. Pacific Time the next morning, before Intel
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`could file its transfer motion and answer, PACT dismissed its Delaware Case without prejudice.
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`Ex. 3.
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`Intel promptly filed a declaratory judgment action the next day in the Northern District of
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`California—where Intel is headquartered, where a number of relevant witness are located, and
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`where many of the previous interactions between the parties took place—on the 12 patents
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`asserted in the now-dismissed Delaware Case (and in PACT’s Texas Case). Intel Corp. v. PACT
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`XPP Schweiz AG, C.A. No. 3:19-cv-02241-WHA (N.D. Cal.) (the “California Case”). Intel did
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`not file its declaratory judgment action in Oregon because PACT—a Swiss company with no
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`known ties to Oregon (or Texas)—may contest that it is subject to personal jurisdiction there.3
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`After filing its declaratory judgment action, Intel filed an Administrative Motion with the
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`Northern District of California, notifying the Court of the parties’ co-pending litigations and
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`requesting a hearing on the issue. Ex. 4. PACT did not respond to Intel’s motion. Judge Alsup
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`3 Because PACT has no place of business or agents for service of process in the United States,
`serving PACT would have required going through the lengthy and complex Hague
`Convention process. For this reason, Intel served PACT by agreement via mail in
`Switzerland, in exchange for PACT receiving a 60-day extension of its time to respond to the
`complaint. Exs. 33, 34.
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`4
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`PACT - Ex. 2024.0008
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`Case 6:19-cv-00273-ADA Document 13 Filed 05/15/19 Page 9 of 24
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`declined to schedule a hearing on the matter, noting that the Texas Case’s “filed first” status,
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`though “not dispositive,” called for the case to “proceed on the normal track, at least up until the
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`initial case management conference.” Ex. 5. Judge Alsup then commenced proceedings by
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`setting a case management conference for August 1, 2019 and ordering that—as a declaratory
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`judgment plaintiff—Intel should be prepared to promptly provide discovery concerning the
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`accused products. Ex. 6. Intel is preparing to promptly provide discovery on the accused
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`products, consistent with Judge Alsup’s schedule.
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`B.
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`Neither PACT nor the asserted patents have any connection to Texas.
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`PACT is a Swiss corporation with its principal place of business in Switzerland. D.I. 1 ¶
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`1. In the company’s Swiss registration papers, PACT states that the purpose of the company is
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`the “acquisition and exploitation of intellectual property.” Ex. 7 at 1. PACT “does not make or
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`sell products in the United States that implement the asserted patents, and to PACT’s knowledge
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`no PACT licensed products made or sold in the United States implement the asserted patents.”
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`D.I. 1 ¶ 15.
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`PACT alleges that its predecessor company was founded in Germany by Martin Vorbach,
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`the lead inventor on all of PACT’s patents. D.I. 1 ¶ 8. Mr. Vorbach is PACT’s Chief
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`Technology Officer and his LinkedIn page indicates he is currently the CTO and Founder of
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`Hyperion-Core Inc., located in Los Gatos, California.4 Ex. 8. The other named inventors appear
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`to be located in Germany. D.I. 1 at Exs. A–L. Additionally, PACT’s current listed prosecution
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`counsel for the 12 patents is located in Northern California. Exs. 9-20. Thus, the evidence
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`relating to conception and reduction to practice of the alleged inventions is likely to be located
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`either in Northern California or Germany, not Texas.
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`4 Intel made several attempts to serve the California complaint on Mr. Vorbach at the Los
`Gatos address, but it appeared to be a residence, and no one was home. Lotfollahi Decl. ¶ 38.
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`5
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`PACT - Ex. 2024.0009
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`Case 6:19-cv-00273-ADA Document 13 Filed 05/15/19 Page 10 of 24
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`C.
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`Intel is headquartered in California and relevant evidence is located there.
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`Intel is the world leader in semiconductor technology and microprocessor products.
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`Intel’s worldwide headquarters is in Santa Clara, California (in the Northern District of
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`California), where it employs over 6,600 people. Kuz Decl. ¶ 4. In total, Intel employs 15,000
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`people in California, including at three major sites in Santa Clara, San Jose (also in the Northern
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`District of California), and Folsom (in the Eastern District of California), as well as thousands
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`more at its campus in Hillsboro, Oregon. Kuz Decl. ¶¶ 4-5.
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`PACT accuses Intel of infringing 12 patents. D.I. 1. PACT accused Intel of infringing
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`those patents by virtue of certain features of Intel’s Core/Xeon processors including “Sandy
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`Bridge” and newer architectures, including the Turbo Boost, ring bus, multi-level caching, and
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`die-stacking features. E.g. D.I. 1 ¶¶ 32–35. Intel designs, develops, manufactures, and tests the
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`accused products at its California and Oregon facilities, and the source code for these
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`technologies are located there.5 Many current and former Intel employees located on the West
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`Coast are involved with and knowledgeable about the research, development, and design of these
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`products. E.g. Kuz Decl. ¶¶ 7-13.
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`In addition, there are current Intel employees located in California and Oregon who are
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`knowledgeable regarding prior interactions between Intel and PACT and/or PACT’s patent
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`brokers who offered to sell PACT’s patent portfolio to Intel multiple times. Id. ¶¶ 12-13
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`(identifying Intel employees Pamela Hays and Jeff Draeger); Ex. 22 (2006 email chain between
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`Pamela Hays, Jeff Draeger, and PACT’s patent brokers). For example, in 2006, Intel employees
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`5 For one of the 12 asserted patents, PACT also accuses Intel’s Atom processors. D.I. 1 ¶ 135.
`Intel has a research and development facility located in Austin that works with aspects of
`Intel’s Atom processors. Ex. 21. Whether the Atom processor or the Austin facility’s work
`on it will play any role in discovery or trial in this case is highly speculative at this point, too
`speculative for such to play a role in either the First-to-File or the Transfer for Convenience
`determination.
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`6
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`PACT - Ex. 2024.0010
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`Case 6:19-cv-00273-ADA Document 13 Filed 05/15/19 Page 11 of 24
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`Jeff Draeger and Pamela Hays interacted with PACT’s patent brokers in their attempt to sell Intel
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`PACT’s patent portfolio. Id. Ron Laurie, from the patent broker group IP-Strategy, was one of
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`the patent brokers Intel interacted with in the 2006 timeframe and is a relevant third-party
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`witness regarding Intel’s and PACT’s prior interactions. Messrs. Draeger and Laurie live in
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`Northern California and Ms. Hays lives in Oregon. Kuz Decl. ¶¶ 12-13; Ex. 27. Intel provides
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`its employees multiple daily airplane shuttles for travel between Oregon and California,
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`significantly reducing the burden on Intel’s employees who live in Oregon to come to California
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`as compared to attending proceedings in Texas. Kuz Decl. ¶ 6. For example, Intel’s Oregon
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`shuttle has multiple daily flights to San Jose (about five miles from Intel in Santa Clara) that are
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`about ninety minutes in duration. Id. Intel also operates at least one forty-five minute flight in
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`each direction between Folsom and San Jose. Id.
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`When PACT and Intel previously entered into a contractual relationship in October of
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`2007, they agreed that California was the appropriate forum to litigate their disputes.
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`Specifically, PACT and Intel entered into a Restricted Use License Agreement (“RULA”)
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`whereby Intel would provide materials to PACT and PACT would create and distribute field-
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`programmable gate array products—the same technology at issue in this case and in the
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`previous PACT patent litigations concerning Xilinx and Altera. Ex. 23. The RULA was signed
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`by PACT’s former CEO, Peter Weber, a relevant third-party witness who appears to currently
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`reside in Northern California. Exs. 23, 28. Section 11.2 of the RULA contains a forum selection
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`clause stating that any disputes regarding the parties’ agreement would be subject to the
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`exclusive jurisdiction of California State or Federal Courts. Ex. 23 at 4.
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`In addition to current and former Intel employees, individuals affiliated with Xilinx and
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`Altera Corporation (acquired by Intel in 2015) are likely to have knowledge relevant to this case.
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`7
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`PACT - Ex. 2024.0011
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`Case 6:19-cv-00273-ADA Document 13 Filed 05/15/19 Page 12 of 24
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`Both Xilinx and Altera were previously involved in litigation with PACT relating to similar
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`technologies at issue in this case. See PACT XPP Techs., AG v. Xilinx, Case No. 2:07-cv-563-
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`RSP (E.D. Tex.) and Altera Corp. v. PACT XPP Techs., AG, Civil Action No. 3:14-cv-02868-JD
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`(N.D. Cal.). Xilinx and former Altera are headquartered in San Jose, California, and their
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`engineers are likely to have knowledge of relevant prior art. Exs. 24-25.
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`III. LEGAL STANDARD
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`A “first-filed action is preferred . . . unless considerations of judicial and litigant
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`economy, and the just and effective disposition of disputes, require otherwise.” Serco Servs. Co.,
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`L.P. v. Kelley Co., 51 F.3d 1037, 1039 (Fed. Cir. 1995) (emphasis added) (citations and internal
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`quotations omitted).6 “Exceptions [to the first-to-file rule] . . . are not rare” and the rule should
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`not be applied where there is a “sound reason that would make it unjust or inefficient to continue
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`the first-filed action.” Elecs. for Imaging, Inc. v. Coyle, 394 F.3d 1341, 1347 (Fed. Cir. 2005)
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`(quotation omitted); see also Raz Imports, Inc. v. Luminara Worldwide, LLC, No. 3:15-cv-
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`02223-M, 2015 WL 6692107, at *2 (N.D. Tex. Nov. 3, 2015). Factors that impact whether to
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`follow the first-to-file rule include whether the filer engaged in bad faith, anticipatory filing, or
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`forum shopping, Serco Servs., 51 F.3d at 1039-40, as well as practical considerations similar to
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`those contemplated under 28 U.S.C. § 1404, namely, “the convenience and availability of
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`witnesses, or absence of jurisdiction over all necessary or desirable parties, or the possibility of
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`consolidation with related litigation, or considerations relating to the real party in interest.”
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`Elecs. for Imaging, 394 F.3d at 1340 (citation omitted). As this Court has noted, “[i]nstead of . .
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`6 Federal Circuit law governs the application of the first-to-file rule in patent infringement
`cases. Elecs. for Imaging, Inc. v. Coyle, 394 F.3d 1341, 1345-46 (Fed. Cir. 2005); see also
`Raz Imports, Inc. v. Luminara Worldwide, LLC, No. 3:15-cv-02223-M, 2015 WL 6692107,
`at *2 (N.D. Tex. Nov. 3, 2015) (“The applicability of the first-to-file rule in this case is
`therefore governed by Federal Circuit law.”).
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`8
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`PACT - Ex. 2024.0012
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`Case 6:19-cv-00273-ADA Document 13 Filed 05/15/19 Page 13 of 24
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`. automatically going with the first filed action, the more appropriate analysis [in cases with
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`competing forum interests] takes account of the convenience factors under 28 U.S.C. § 1404(a).”
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`Valeo, Inc. v. Fed.-Mogul Corp., No. EP-13-CV-115-PRM, 2013 WL 8480673, at *2 (W.D. Tex.
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`Oct. 17, 2013) (citing Micron Tech., Inc. v. Mosaid Techs., Inc., 518 F.3d 897, 902, 904 (Fed.
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`Cir. 2008)); see also PPS Data, LLC v. Diebold, Inc., No. 2:12:-cv-TC, 2012 WL 1884655, *2
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`(D. Utah May 22, 2012) (“Considering these facts as a whole, the court finds that PPS Data’s
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`actions constitute the sort of procedural fencing that merits an exception to the first-to-file rule”).
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`When deciding whether transfer is appropriate under § 1404(a), courts in this Circuit
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`consider both private and public interest factors. In re Volkswagen of Am., Inc., 545 F.3d 304,
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`315 (5th Cir. 2008) (en banc). The private interest factors include “(1) the relative ease of access
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`to sources of proof; (2) the availability of compulsory process to secure the attendance of
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`witnesses; (3) the cost of attendance for willing witnesses; and (4) all other practical problems
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`that make trial of a case easy, expeditious and inexpensive.” Id. The public interest factors
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`include “(1) the administrative difficulties flowing from court congestion; (2) the local interest in
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`having localized interests decided at home; (3) the familiarity of the forum with the law that will
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`govern the case; and (4) the avoidance of unnecessary problems of conflict of laws [or in] the
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`application of foreign law.” Id. In this Circuit, the plaintiff’s choice of venue is not a factor in
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`this analysis. Id. at 314–15. Instead, the plaintiff’s choice of venue contributes to the
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`defendant’s burden of proving that the transferee venue is “clearly more convenient” than the
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`transferor venue. Id. at 315. “[T]he district courts have broad discretion in deciding whether to
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`order a transfer under § 1404(a).” DataQuill, Ltd. v. Apple Inc., No. A-13-CA-706-SS, 2014 WL
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`2722201, at *2 (W.D. Tex. June 13, 2014) (quoting In re Volkswagen of Am., Inc., 545 F.3d at
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`313–15).
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`
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`9
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`PACT - Ex. 2024.0013
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`

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`Case 6:19-cv-00273-ADA Document 13 Filed 05/15/19 Page 14 of 24
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`Thus, Courts have multiple available options to deal with a duplicative action that, while
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`technically filed earlier than another action, is not entitled to “first-filed” precedence, including
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`dismissing, staying, or transferring the first-filed action in favor of the proper, later-filed action.
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`Serco, 51 F.3d at 1038; Exxon Chem. Patents, Inc. v. Lubrizol Corp., 935 F.2d 1263, 1271 (Fed.
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`Cir. 1991) (Newman, J. concurring) (finding decision to enjoin prosecution of the duplicative
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`suit “in full accord with the policy disfavoring duplicative litigation” (internal citations
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`omitted)); Valeo, Inc., 2013 WL 8480673, at *7. Any of these remedial measures would be
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`appropriate in light of PACT’s forum-shopping attempt.
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`IV. ARGUMENT
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`PACT’s duplicative and anticipatory Texas Case should be dismissed. Even if the Texas
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`Case is considered first-filed vis-a-vis the California Case,7 the first-to-file rule does not apply
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`because PACT improperly filed the Texas Case in an attempt to deprive the Delaware court of an
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`opportunity to rule on Intel’s well-founded motion to transfer. In addition, equitable and
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`convenience considerations also weigh heavily against the application of the first-to-file rule here
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`because the parties’ dispute has no apparent ties to this District (PACT has none), particularly as
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`compared to the strong ties between the parties’ dispute and the Northern District of California,
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`where Intel’s California Case is pending.
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`
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`A.
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`Dismissal is warranted because PACT’s bad faith, anticipatory filing, and
`forum-shopping negate the first-to-file rule.
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`The Court should not apply the first-to-file rule in this case because, as numerous courts
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`have held, rigid application of the first-to-file rule is inappropriate where the facts reveal that the
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`7 The Texas complaint should not receive “first-filed” treatment. PACT filed the same
`complaint in Delaware three months ago, which case was pending and would have been
`subject to Intel’s transfer motion until PACT refiled in Texas.
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`
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`10
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`PACT - Ex. 2024.0014
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`

`

`Case 6:19-cv-00273-ADA Document 13 Filed 05/15/19 Page 15 of 24
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`first-filed case was the result of bad faith gamesmanship, anticipatory filing, and forum
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`shopping. In other words, courts routinely decline to apply the first-to-file rule where doing so
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`would be unjust. See, e.g., Serco Servs., 51 F.3d at 1039-40; PPS Data, LLC, 2012 WL
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`1884655, *1-2 (declining to apply the first-to-file rule where Plaintiff originally filed suit in
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`Delaware, dismissed its suit after a motion to transfer was filed, and then filed suit in a second
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`district—Plaintiff “should not be allowed to pick a second forum for its suit simply because it
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`filed its new complaint a day before Diebold brought its declaratory judgment action”); Raz
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`Imports, Inc., 2015 WL 6692107, at *3 (declining to apply the first-to-file rule and transferring
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`suit where the “facts meet the definition of an anticipatory lawsuit”); Wells Fargo Bank, N.A. Tr.
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`for Natividad Caballero 2007 Ins. Tr. v. Principal Life Ins. Co., No. CV-09-00068-DDP (RZX),
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`2009 WL 10671947, at *3 (C.D. Cal. Apr. 22, 2009) (“The Court need not resolve this [first-to-
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`file] issue because even if the Court were to find the Delaware Action to be the first-filed suit,
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`the Court would be inclined to find that equitable and convenience considerations counsel
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`heavily against the application of the first-to-file doctrine here.”); Sport Supply Grp., Inc. v.
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`R&G Prods., Inc., No. 3:08-cv-02031-O, 2009 WL 10677398, at *3 (N.D. Tex. Sept. 30, 2009)
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`(holding the plaintiff’s complaint was anticipatory and resulted from forum shopping and that
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`“[b]ased on these facts, the Court finds compelling circumstances exist to preclude application of
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`the first to file rule”). Here, PACT’s actions make it unjust to continue the Texas case,
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`rewarding the bad-faith gamesmanship motivated by PACT’s forum shopping objectives.
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`The holding in PPS Data is particularly on point. The facts at issue in that case are
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`indistinguishable from those at issue here. 2012 WL 1884655, **1–2. There, the court refused
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`to apply the first-to-file rule, and instead dismissed the action due to Plaintiff’s forum shopping.
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`Id. at *2. The plaintiff in that case first filed suit in the District of Delaware. Id. at *1. Then, in
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`11
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`PACT - Ex. 2024.0015
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`

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`Case 6:19-cv-00273-ADA Document 13 Filed 05/15/19 Page 16 of 24
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`response to a motion to transfer b