Case 6:22-cv-00033-ADA Document 20 Filed 02/25/22 Page 1 of 15
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`UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`ECOFACTOR, INC,
`
`Plaintiff,
`
`v.
`
`ECOBEE, INC.,
`
`Defendant.
`
`Case No. 6:22-cv-00033-ADA
`
`JURY TRIAL DEMANDED
`
`DEFENDANT ECOBEE, INC.’S MOTION TO DISMISS PURSUANT TO RULE
`12(b)(3), 12(b)(6) AND THE FIRST-TO-FILE RULE OR, IN THE ALTERNATIVE, TO
`TRANSFER OR STAY
`
`ECOBEE V. ECOFACTOR
`IPR2022-00969
`Exhibit 2001
`Page 1
`
`

`

`Case 6:22-cv-00033-ADA Document 20 Filed 02/25/22 Page 2 of 15
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`
`
`
`
`TABLE OF CONTENTS
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`Page
`
`I.
`
`INTRODUCTION ............................................................................................................ 1
`
`II.
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`FACTUAL BACKGROUND ........................................................................................... 3
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`III.
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`THE COURT SHOULD DISMISS, TRANSFER OR STAY THE CASE
`PURSUANT TO THE FIRST-TO-FILE RULE .............................................................. 6
`
`A.
`
`B.
`
`The Court Should Dismiss Pursuant to Rule 12(b)(3), 12(b)(6) and the First
`to File Rule, or Transfer This Case to Massachusetts, the Jurisdiction of the
`First-Filed Complaint ............................................................................................6
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`Alternatively, the Court Should Stay Pending the Massachusetts Court’s
`Decision on EcoFactor’s Motion to Dismiss Under the First-to-File Rule ..........9
`
`CONCLUSION ............................................................................................................... 10
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`IV.
`
`
`i
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`ECOBEE V. ECOFACTOR
`IPR2022-00969
`Exhibit 2001
`Page 2
`
`

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`Case 6:22-cv-00033-ADA Document 20 Filed 02/25/22 Page 3 of 15
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`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`
`
`Cases
`
`Aguilera v. Matco Tools Corp.,
`No. 319-CV-01576, 2020 WL 1188142 (S.D. Cal. Mar. 12, 2020) ..........................................9
`
`Apple Inc. v. VoIP-Pal.com Inc.,
`506 F. Supp. 3d 947 (N.D. Cal. 2020) .......................................................................................9
`
`Dynaenergetics Europe GMBH v. Hunting Titan, Inc.,
`No. 6:20-cv-69-ADA, D.I. 41 (W.D. Tex. June 16, 2020) ........................................................9
`
`EcoFactor, Inc. v. ecobee Inc., No. 1:19-cv-12325-PBS ................................................................1
`
`EcoFactor, Inc. v. ITC,
`Case No. 21-2339, D.I. 1 (Fed. Cir. Sept. 22, 2021) .................................................................5
`
`Enteral Prods., LLC v. Meds Direct RX of NY, LLC,
`No. cv 16-00915, 2016 WL 9185156 (C.D. Cal. April 28, 2016) .............................................8
`
`Mann Mfg., Inc. v. Hortex, Inc.,
`439 F.2d 403 (5th Cir. 1971) .....................................................................................................9
`
`Overland Storage, Inc. v. BDT Automation Tech. (Zhuahai FTZ) Co., Ltd.,
`No. 10-CV-1700 JLS, 2010 WL 5089002 (S.D. Cal. Dec. 8, 2010) .........................................8
`
`In re Princo Corp.,
`486 F.3d 1365 (Fed. Cir. 2007)..................................................................................................8
`
`Save Power Ltd. v. Syntek Fin. Corp.,
`121 F.3d 947 (5th Cir. 1997) .....................................................................................................6
`
`SmileDirect Club, LLC v. Candid Care Co.,
`No. 1:20-cv-01764-CFC, 2021 WL 3269092 (D. Del. July 30, 2021) ..................................8, 9
`
`Techn’s ULC v. EcoFactor, Inc.,
`No. 1:22-CV-10049-PBS, D.I. 1 ................................................................................................2
`
`USX Corp. v. Penn Cent. Corp.,
`130 F.3d 562 (3d. Cir. 1997)......................................................................................................6
`
`VoIP-Pal.com, Inc. v. Apple Inc.,
`6:20-cv-00275-ADA, D.I. 43, Order Staying Cases (W.D. Tex. Sept. 29,
`2020) ........................................................................................................................................10
`
`ii
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`ECOBEE V. ECOFACTOR
`IPR2022-00969
`Exhibit 2001
`Page 3
`
`

`

`Case 6:22-cv-00033-ADA Document 20 Filed 02/25/22 Page 4 of 15
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`
`
`West Gulf Maritime Ass’n v. ILA Deep Sea Local 24,
`751 F.2d 721 (5th Cir. 1985) .....................................................................................................6
`
`
`
`iii
`
`ECOBEE V. ECOFACTOR
`IPR2022-00969
`Exhibit 2001
`Page 4
`
`

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`Case 6:22-cv-00033-ADA Document 20 Filed 02/25/22 Page 5 of 15
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`
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`I.
`
`INTRODUCTION
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`This case is an attempt by Plaintiff EcoFactor Inc. (“Plaintiff” or “EcoFactor”) to relitigate
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`the same patent infringement claims that it previously filed, in 2019, against ecobee1 (“Defendant”
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`or “ecobee”) in both the District of Massachusetts (EcoFactor, Inc. v. ecobee Inc., No. 1:19-cv-
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`12325-PBS (“2019 Action”)) and the International Trade Commission (ITC Investigation No. 337-
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`TA-1185 (“the 1185 Investigation”)). EcoFactor suffered a complete defeat at the ITC; it dropped
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`many of the claims before trial because they were too weak to take to trial, and the claims it did
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`try were held invalid and non-infringed by ecobee. Although EcoFactor filed an appeal of the
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`ITC’s decision, it knew it had no hope of prevailing on appeal. So, on the eve of the due date of
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`its opening appellate brief, EcoFactor engaged in a procedural gambit to avoid appellate review
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`and—more relevant to the instant motion—divest the District of Massachusetts of jurisdiction so
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`that it could re-file its baseless claims in the Western District of Texas. EcoFactor presumes—
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`ecobee submits, incorrectly—that this Court will have more sympathy to its effort to disregard the
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`ITC proceedings and relitigate its losing patent infringement claims than would the District of
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`Massachusetts (which stayed the 2019 Action pursuant to 28 U.S.C. § 1659(a) pending the
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`outcome of the 1185 Investigation).
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`Specifically, on January 10, 2022—while the 2019 Action remained stayed—EcoFactor
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`filed a notice of voluntary dismissal of the 2019 Action pursuant to Federal Rule of Civil Procedure
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`41(a)(1)(A)(i). 2019 Action, D.I. 20. On the same day (January 10, 2022), immediately after
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`dismissing the 2019 Action, EcoFactor filed the present infringement action against ecobee,
`
`
`1 ecobee, Inc. was recently acquired by Generac Holdings Inc. After the acquisition, ecobee, Inc.
`became ecobee Technologies ULC d/b/a/ ecobee, which is now the entity that makes, uses, offers
`for sale and/or sells the products at issue in the three relevant proceedings.
`
`1
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`ECOBEE V. ECOFACTOR
`IPR2022-00969
`Exhibit 2001
`Page 5
`
`

`

`Case 6:22-cv-00033-ADA Document 20 Filed 02/25/22 Page 6 of 15
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`
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`alleging infringement of the Asserted Patents based on the same activity originally accused in both
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`the ITC and the Massachusetts 2019 Action. D.I. 1.
`
`In view of the foregoing, on January 13, 2022, ecobee (1) filed a declaratory judgment
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`action in the District of Massachusetts to ensure that Court remains the district court that
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`adjudicates these issues, and (2) filed its objection to the Notice of Dismissal of the 2019 Action,
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`based on EcoFactor’s bad faith, continued pursuit of these claims and procedural gamesmanship.
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`The Massachusetts Court acted promptly on EcoFactor’s Notice and ecobee’s objections on
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`January 19, 2022, overruling the objection but expressly stating that the Court would consider
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`EcoFactor’s alleged “gamesmanship” in connection with ecobee’s declaratory judgment suit in
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`that district. 2019 Action, D.I. 24 (D. Mass. Jan. 19, 2022) (Ex. 6).
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`ecobee has also filed a motion for sanctions against EcoFactor in this Court under Rule 11
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`of the Federal Rules of Civil Procedure (D.I. 17), because EcoFactor’s allegations are baseless,
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`frivolous and brought in bad faith. The substance of that motion is incorporated by reference.
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`If the Court does not dismiss EcoFactor’s Complaint altogether under either Rule 11 or
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`Rule 12, it should transfer the case according to the first-to-file rule back to the District of
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`Massachusetts, where these claims were originally filed in 2019—and where the same Judge
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`assigned to that 2019 Action, Judge Patti Saris, is currently presiding over ecobee’s claims seeking
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`a declaratory judgment of non-infringement on the same patents. ecobee Techn’s ULC v.
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`EcoFactor, Inc., No. 1:22-CV-10049-PBS, D.I. 1, Complaint (D. Mass. Jan. 13, 2022) (“ecobee’s
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`Declaratory Judgment Action”). Indeed, Judge Saris has scheduled a hearing on April 21, 2022 to
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`address EcoFactor’s attempt to shift the case to the Western District of Texas. ecobee’s
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`Declaratory Judgment Action D.I. 28, 29. Alternatively, the Court should stay the present case, as
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`it has done in similar situations, to allow Judge Saris to “consider the claim of [EcoFactor’s]
`
`2
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`ECOBEE V. ECOFACTOR
`IPR2022-00969
`Exhibit 2001
`Page 6
`
`

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`Case 6:22-cv-00033-ADA Document 20 Filed 02/25/22 Page 7 of 15
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`
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`‘gamesmanship,’” which she has already indicated that she plans to do. 2019 Action, D.I. 24 (D.
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`Mass. Jan. 19, 2022).
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`II.
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`FACTUAL BACKGROUND
`
`On October 23, 2019, Plaintiff filed a complaint with the ITC under Section 337 of the
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`Tariff Act of 1930 (“the 1185 Investigation”), alleging that ecobee, among others, infringed U.S.
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`Patent Nos. 8,131,497 (“the ’497 Patent”); 8,423,322 (“the ’322 Patent”); 8,498,753 (“the ’753
`
`Patent”); and 10,018,371 (“the ’371 Patent”) (collectively, the “Asserted Patents”). See 2019
`
`Action, D.I. 7 at 1. On November 12, 2019, Plaintiff filed the 2019 Action against ecobee, alleging
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`that ecobee infringed the Asserted Patents. 2019 Action, D.I. 1.
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`On November 22, 2019, the ITC instituted the 1185 Investigation, naming ecobee as one
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`of several respondents in the proceeding. See 2019 Action, D.I. 7 at 1. On December 13, 2019, the
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`parties to the 2019 Action filed a joint motion to stay pursuant to 28 U.S.C. § 1659(a), requesting
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`that “the Court enter an Order staying this action in its entirety pending final resolution of ITC
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`Investigation No. 337-TA-1185, including any and all appeals.” Id. at 2. Granting that request,
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`Judge Saris entered an “Order of Administrative Stay/Closing” on January 15, 2020, staying the
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`case “without prejudice to the right of any party to restore it to the active docket pending resolution
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`of ITC Investigation No. 337-TA-1185.” 2019 Action, D.I. 11 (Ex. 1).
`
`During the course of the 1185 Investigation, IPR petitions were filed with the PTO, seeking
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`determinations that certain claims of the patents asserted in the 1185 Investigation and the 2019
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`Action were invalid. EcoFactor (represented there by its current counsel of record) avoided
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`institution of the IPRs by arguing that duplicative proceedings should be avoided as a matter of
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`efficiency, because EcoFactor would abide by the findings of the 1185 Investigation.
`
`Petitioner … mischaracterizes EcoFactor’s statement in the POPR that validity
`disputes in the ITC “are likely to carry over to the district court” (Reply at 4-5).
`
`3
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`ECOBEE V. ECOFACTOR
`IPR2022-00969
`Exhibit 2001
`Page 7
`
`

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`Case 6:22-cv-00033-ADA Document 20 Filed 02/25/22 Page 8 of 15
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`
`
`That statement is merely a restatement of Fintiv, which stated that “as a practical
`matter, it is difficult to maintain a district court proceeding on patent claims
`determined to be invalid at the ITC.” Fintiv at 9. In other words, once the ITC case
`makes a determination regarding invalidity as to a particular patent versus a
`particular prior art, neither side is likely to maintain the same assertion in district
`court.
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`See, e.g., Ex. 2 at 3-4 (emphasis added). Based in large part on EcoFactor’s representation,
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`the PTO declined to institute the IPR—allowing the ITC instead to decide questions of invalidity.
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`In the interim, the 1185 Investigation proceeded thorough extensive discovery, including
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`the production of thousands of documents, many days of source code review, the answering of
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`dozens of interrogatories, multiple fact witness depositions, extensive expert reports, and several
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`expert witness depositions. As the ITC hearing date approached, EcoFactor was compelled to
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`withdraw virtually all of its claims against ecobee because the evidentiary record that it developed
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`could not support EcoFactor even raising those arguments at the trial/evidentiary hearing; thus,
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`EcoFactor moved to terminate the 1185 Investigation with respect to its infringement allegations
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`regarding the ’753, ’322, and ’371 Patents against ecobee. See Ex. 3 (1185 Investigation, Order
`
`No. 27 (Nov. 27, 2020) (EDIS Doc ID 726499))). As such, only the ’497 Patent remained at-issue
`
`against ecobee at trial. See Ex. 4 (1185 ID) at 6.
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`On April 20, 2021, the ALJ issued his Initial Determination for the 1185 Investigation. See
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`Ex. 2 (1185 ID). In the Initial Determination, the ALJ found, inter alia, that (a) ecobee did not
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`infringe the asserted claims of the ’497 Patent, (b) the Respondents had shown, through clear and
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`convincing evidence, that the asserted claims of the ’497 Patent were invalid under 35 U.S.C. §
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`112, ¶1, and (c) the Respondents had shown, through clear and convincing evidence, that certain
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`claims of the ’322 Patent were anticipated or rendered obvious in view of the prior art, and that
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`the asserted claims of the ’322 Patent were invalid under 35 U.S.C. § 112, ¶1. See, e.g., Ex. 4 at
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`4
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`ECOBEE V. ECOFACTOR
`IPR2022-00969
`Exhibit 2001
`Page 8
`
`

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`Case 6:22-cv-00033-ADA Document 20 Filed 02/25/22 Page 9 of 15
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`575-77. On, July 20, 2021, the Commission determined not to review any of the findings set forth
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`above. See Ex. 5 (Not. Comm’n Op., 86 Fed. Reg. 40,077-78 (July 26, 2021) (“1185 Notice”)).
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`In September 2021, EcoFactor filed a petition to appeal the ITC’s final determination in
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`the 1185 Investigation in the Federal Circuit, which was docketed on September 22, 2021. See
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`EcoFactor, Inc. v. ITC , Case No. 21-2339, D.I. 1 (Fed. Cir. Sept. 22, 2021). On December 27,
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`2021, EcoFactor moved to voluntarily dismiss its appeal. Id. at D.I. 22. On December 28, 2021,
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`the Federal Circuit granted EcoFactor’s motion, dismissing the appeal. Id. at D.I. 23.
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`Following EcoFactor’s voluntary dismissal of its appeal, EcoFactor filed its notice of
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`voluntary dismissal of the 2019 Action pursuant to Federal Rule of Civil Procedure 41(a)(1)(A)(i)
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`on January 10, 2022. 2019 Action, D.I. 20. At no point prior to filing its Notice did EcoFactor
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`advise the Massachusetts court of the status of the 1185 Investigation, seek to restore the Action
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`to the active docket, or otherwise notify the Massachusetts court or ecobee that it intended to
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`dismiss the 2019 Action so that it could refile in another jurisdiction. On the same day (January
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`10, 2022), immediately after dismissing the 2019 Action, EcoFactor filed the present infringement
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`action against, alleging infringement of the Asserted Patents based on the same activity originally
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`accused in both the ITC and the Massachusetts 2019 Action. D.I. 1.
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`In view of the foregoing, on January 13, 2022, ecobee (1) filed the ecobee Declaratory
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`Judgment Action in the District of Massachusetts to ensure that Court remains the district court
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`that adjudicates these issues, and (2) filed its objection to the Notice of Dismissal of the 2019
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`Action, based on EcoFactor’s bad faith, continued pursuit of these claims and procedural
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`gamesmanship. The Massachusetts Court acted promptly on EcoFactor’s Notice and ecobee’s
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`objections on January 19, 2022, at which time it overruled the objection but expressly stating that
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`5
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`ECOBEE V. ECOFACTOR
`IPR2022-00969
`Exhibit 2001
`Page 9
`
`

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`Case 6:22-cv-00033-ADA Document 20 Filed 02/25/22 Page 10 of 15
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`
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`the Court would consider EcoFactor’s alleged “gamesmanship” in connection with ecobee’s
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`declaratory judgment suit in that district. 2019 Action, D.I. 24 (D. Mass. Jan. 19, 2022) (Ex. 6).
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`On February 10, 2022, EcoFactor filed a motion to dismiss the declaratory action currently
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`pending in the District of Massachusetts. ecobee filed its opposition to the motion on February
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`24, 2022. The District of Massachusetts has scheduled both a hearing on the motion to dismiss
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`and a scheduling conference on April 21, 2022.
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`III. THE COURT SHOULD DISMISS, TRANSFER OR STAY THE CASE PURSUANT
`TO THE FIRST-TO-FILE RULE
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`A. The Court Should Dismiss Pursuant to Rule 12(b)(3), 12(b)(6) and the First to
`File Rule, or Transfer This Case to Massachusetts, the Jurisdiction of the
`First-Filed Complaint
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`“[T]o avoid rulings which may trench upon the authority of sister courts, and to avoid
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`piecemeal resolution of issues that call for a uniform result,” the Fifth Circuit adheres to the so-
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`called “first-to-file” rule which provides that “where duplicative issues and parties exist in two
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`cases the court with the first case should resolve the issues between the parties and the second
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`court should defer.” Save Power Ltd. v. Syntek Fin. Corp., 121 F.3d 947, 950 (5th Cir. 1997) (citing
`
`West Gulf Maritime Ass'n v. ILA Deep Sea Local 24, 751 F.2d 721, 728 (5th Cir. 1985)). In this
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`case, as of January 13, 2022, three duplicative cases were pending in two jurisdictions covering
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`the same allegations of patent infringement between the same parties: the 2019 Action and
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`ecobee’s Declaratory Judgement Action in Massachusetts, and the present action in this Court.
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`Among these, there is no debate that the 2019 Action is the first-filed case.
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`EcoFactor will argue the Court should not consider the 2019 Action in the analysis because
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`it was voluntarily dismissed, but EcoFactor filed its Notice at a time the case was administratively
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`stayed. The Massachusetts Court did not lift the stay until it acted on EcoFactor’s Notice,
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`overruling ecobee’s objection thereto on January 19, 2022—after both EcoFactor had filed this
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`6
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`ECOBEE V. ECOFACTOR
`IPR2022-00969
`Exhibit 2001
`Page 10
`
`

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`Case 6:22-cv-00033-ADA Document 20 Filed 02/25/22 Page 11 of 15
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`
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`Texas Action and ecobee had filed its Declaratory Judgment Action. For this reason alone, the
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`Court should consider the 2019 Action the first-filed case. See USX Corp. v. Penn Cent. Corp.,
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`130 F.3d 562, 566-68 (3d. Cir. 1997) (affirming dismissal of an action due to a Rule 41(a)(1) notice
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`of dismissal that was filed after a stayed litigation had been reopened, and giving no effect to both
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`a previous summary judgment motion filed by defendants during the stay, as well as previous Rule
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`41(a)(1) notices filed by plaintiff while the case was stayed).2
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`The interests of justice also favor the Court treating the 2019 Action as the first-filed case.
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`First, the Massachusetts Court’s Stay Order was premised on either party being able to lift the stay
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`to litigate in that jurisdiction at the conclusion of the ITC Investigation. That Order expressly
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`provided that it was entered “without prejudice to the right of any party to restore it to the active
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`docket pending resolution of ITC Investigation No. 337-TA-1185.” Ex. 1. EcoFactor’s unilateral
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`action in noticing a dismissal with the stay still pending deprived ecobee of “the right…to restore
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`it to the active docket” that the Stay Order provided. Id. Thus, EcoFactor’s procedural
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`maneuvering unfairly runs counter to the Massachusetts Court’s Order.
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`Second, allowing EcoFactor to benefit from its abrupt, bad faith and unilateral uprooting
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`of these claims from Massachusetts to Texas while the case was stayed is contrary to the policy
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`behind 28 U.S.C. § 1659, the statute under which the parties jointly moved to stay the 2019 Action.
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`When a civil action involves parties that also are parties to a proceeding before the ITC, the district
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`court must grant a timely “request of a party to the civil action that is also a respondent in the
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`proceeding before the Commission” to stay the civil action “with respect to any claim that involves
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`the same issues involved in the proceeding before the Commission.” See 28 U.S.C. § 1659(a).
`
`
`2 At minimum, and as argued in greater detail in the portion of this motion seeking a stay, this
`Court should defer to the District of Massachusetts’ analysis of the relationship between the two
`cases before it, and the impact of the Notice of Dismissal, ecobee’s objection, that Court’s order
`concerning the same.
`
`7
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`ECOBEE V. ECOFACTOR
`IPR2022-00969
`Exhibit 2001
`Page 11
`
`

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`Case 6:22-cv-00033-ADA Document 20 Filed 02/25/22 Page 12 of 15
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`“The purpose of § 1659(a) [is] to prevent infringement proceedings from occurring ‘in two forums
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`at the same time.’” Overland Storage, Inc. v. BDT Automation Tech. (Zhuahai FTZ) Co., Ltd., No.
`
`10-CV-1700 JLS, 2010 WL 5089002, at *1 (S.D. Cal. Dec. 8, 2010) (quoting In re Princo Corp.,
`
`486 F.3d 1365, 1368 (Fed. Cir. 2007)). If EcoFactor is allowed to unilaterally dismiss the 2019
`
`Action for the purposes of forum shopping during a continuing stay under § 1659, it will encourage
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`defendants facing duplicative ITC and civil infringement proceedings to litigate both proceedings
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`simultaneously to negate the possibility of a unilateral dismissal under Fed. R. Civ. P. 41(a)(1(A)(i)
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`and a refiling in another, potentially less convenient district. In addition to being directly contrary
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`to the purpose of § 1659, this promotion of duplicative litigation will only lead to wasted judicial
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`resources, added expense for the parties in the proceedings, and an increase in inconsistent
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`outcomes across the fora. Accordingly, in addition to being contrary to the Massachusetts Court’s
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`Stay Order, policy reasons also favor considering the 2019 Action the first-filed case.
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`In similar circumstances where a plaintiff originally chose a forum for its claims which
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`were either adjudicated or dismissed, and then the same or similar claims were filed in a different
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`jurisdiction as a new suit, the original court has found such activity amounts to improper forum
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`shopping, warranting an exception to the first-to-file rule. Enteral Prods., LLC v. Meds Direct RX
`
`of NY, LLC, No. cv 16-00915, 2016 WL 9185156, at *1-2 (C.D. Cal. April 28, 2016) (the court
`
`where claims were originally filed but voluntarily dismissed holding it “will not give [ ] a suit the
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`deference ordinarily reserved for First-Filed actions,” where it appears the defendant’s suit in
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`another jurisdiction was “anticipatory and an improper attempt at forum shopping”); SmileDirect
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`Club, LLC v. Candid Care Co., No. 1:20-cv-01764-CFC, 2021 WL 3269092, at *3 (D. Del. July
`
`30, 2021) (holding “[patentee]’s litigation gamesmanship should not be rewarded with a rigid
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`application of the first-to-file rule where the court had previously adjudicated “very, very similar,
`
`8
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`ECOBEE V. ECOFACTOR
`IPR2022-00969
`Exhibit 2001
`Page 12
`
`

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`Case 6:22-cv-00033-ADA Document 20 Filed 02/25/22 Page 13 of 15
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`
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`if not identical [claims]” to those in a “second-filed” declaratory judgment action); Apple Inc. v.
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`VoIP-Pal.com Inc., 506 F. Supp. 3d 947, 960 (N.D. Cal. 2020) (refusing to dismiss declaratory
`
`judgment actions filed subsequent to the DJ Defendant’s own cases and expressly “declin[ing] to
`
`apply the first-to-file rule to permit Defendant to forum shop” where the Court oversaw earlier
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`cases on related claims but the Defendant filed in another jurisdiction)3; see also Aguilera v. Matco
`
`Tools Corp., No. 319-CV-01576, 2020 WL 1188142, at *5 (S.D. Cal. Mar. 12, 2020) (holding “it
`
`would be inequitable in this situation to apply the first-to-file rule in favor of the Ohio forum
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`because Matco seeks to arbitrate in Ohio claims Plaintiff brought first and voluntarily dismissed
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`in California. As such the Court exercises its discretion to disregard the first-to-file rule.”).
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`B. Alternatively, the Court Should Stay Pending the Massachusetts Court’s
`Decision on EcoFactor’s Motion to Dismiss Under the First-to-File Rule
`
`The Fifth Circuit has held that “[i]n the absence of compelling circumstances the court
`
`initially seized of a controversy should be the one to decide whether it will try the case.” Mann
`
`Mfg., Inc. v. Hortex, Inc., 439 F.2d 403, 407 (5th Cir. 1971); Dynaenergetics Europe GMBH v.
`
`Hunting Titan, Inc., No. 6:20-cv-69-ADA, D.I. 41 at 3 (W.D. Tex. June 16, 2020) (“[T]he court in
`
`which an action is first filed should determine whether subsequently filed cases involving
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`substantially similar issues should proceed,” including “whether the second suit filed must be
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`dismissed, stayed, or transferred and consolidated.”). Here, the Massachusetts Court was the one
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`that the plaintiff chose to “initially seize” the controversy, and thus, it should be the Court to decide
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`whether it will try the case. In seeking to dismiss ecobee’s Declaratory Judgment Action,
`
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`3 Like this case, both SmileDirect and VoIP-Pal involved cases where the Plaintiff filed its patent
`infringement claims in the Western District of Texas after previously selecting another district.
`See CandidCare at 6-7 (the Delaware court noting “SmileDirectClub’s flexibility with the truth”
`in “want[ing] Judge Albright to deny Candid Care’s motion to dismiss the Texas case”); VoIP-
`Pal, at 13 (“Defendant filed its latest cases in Waco, Texas, where Defendant lacks ties”). In both
`instances, this Court appropriately deferred to the first-filed forum.
`
`9
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`ECOBEE V. ECOFACTOR
`IPR2022-00969
`Exhibit 2001
`Page 13
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`Case 6:22-cv-00033-ADA Document 20 Filed 02/25/22 Page 14 of 15
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`EcoFactor has made all of the arguments to the Massachusetts Court that it would likely make to
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`this one about why this case should proceed in Texas, rather than Massachusetts. And in granting
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`dismissal of the 2019 Action, Judge Saris has already indicated that she plans to consider the
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`propriety of EcoFactor’s procedural maneuvering, stating the Court “will consider the claim of
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`‘gamesmanship’ in addressing the new action [i.e., the instant action].” Ex. 6.
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`In a similar case this Court stayed several litigations, deferring to Judge Koh in the
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`Northern District of California to determine whether earlier-filed cases that she presided over on
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`related patent claims should be considered the “first-filed” cases to subsequent cases filed by the
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`same plaintiff on related patents against some of the same defendants. VoIP-Pal.com, Inc. v. Apple
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`Inc., 6:20-cv-00275-ADA, D.I. 43, Order Staying Cases (W.D. Tex. Sept. 29, 2020). Here, the
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`patent claims (and parties) are not just related to the earlier patent claims, they are identical. This
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`case thus presents an even more compelling reason to defer to the first-filed forum for deciding
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`whether to maintain jurisdiction. In the meantime, as it did in the VoIP-Pal disputes, the Court
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`should stay this case to preserve private and public resources.
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`IV. CONCLUSION
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`The claims in this case were first-filed in Massachusetts. This Court should dismiss or
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`transfer the case back to Massachusetts to avoid duplicative litigation there. Alternatively, the
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`Court should stay this case and defer to the Massachusetts Court’s analysis of the first-to-file rule
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`in this situation.
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`10
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`ECOBEE V. ECOFACTOR
`IPR2022-00969
`Exhibit 2001
`Page 14
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`

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`Case 6:22-cv-00033-ADA Document 20 Filed 02/25/22 Page 15 of 15
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`Dated: February 25, 2022
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`Respectfully submitted,
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`/s/ Timothy J. Carroll
`(with permission by Jennifer P. Ainsworth)
`Timothy J. Carroll
`VENABLE LLP
`227 West Monroe Street, Suite 3950
`Chicago, ILL 60606
`Telephone: (312) 820-3400
`Fax: (312) 820-3401
`TJCarroll@Venable.com
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`Manny J. Caixeiro
`VENABLE LLP
`2049 Century Park East, Suite 2300
`Los Angeles, CA 90067
`Telephone: (310) 229-9900
`Fax: (310) 229-9901
`MJCaixeiro@Venable.com
`
`Jennifer Parker Ainsworth
`Texas State Bar No. 00784720
`WILSON, ROBERTSON & CORNELIS, P.C.
`909 ESE Loop 323, Suite 400
`Tyler, Texas 75701
`Telephone: (903) 509-5000
`Fax: (903) 509-5092
`jainsworth@wilsonlawfirm.com
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`Attorneys for Defendants
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that counsel of record who are deemed to have consented to
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`electronic service are being served on February 25, 2022, with a copy of this document via the
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`Court’s CM/ECF.
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`/s/ Jennifer P. Ainsworth
`Jennifer P. Ainsworth
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`11
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`ECOBEE V. ECOFACTOR
`IPR2022-00969
`Exhibit 2001
`Page 15
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