Case 6:15-cv-00907-RWS-KNM Document 10-6 Filed 12/10/15 Page 1 of 7 PageID #: 150
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`Exhibit E
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`Case 2:06-cv-00302-DF Document 405 Filed 07/02/08 Page 1 of 6 PageID #: 24832Case 6:15-cv-00907-RWS-KNM Document 10-6 Filed 12/10/15 Page 2 of 7 PageID #: 151
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
` MARSHALL DIVISION
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`CIVIL ACTION NO. 2:06-CV-302 (DF)
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`§§§§§§§§§§§§
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`MOSAID TECHNOLOGIES INC.,
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`Plaintiff,
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`v.
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`MICRON TECHNOLOGY, INC. and
`POWERCHIP SEMICONDUCTOR
`CORP.,
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`Defendants.
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`ORDER
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`Currently before the Court are Micron Technologies Inc.’s (“Micron”) Emergency Motion
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`to Stay Proceedings (Dkt. No. 301), Powerchip ’s Emergency Motion to Stay Proceedings (Dkt. No.
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`302), and Micron’s Motion to Dismiss and Transfer (Dkt. No. 303), Powerchip’s Motion to Change
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`Venue (Dkt. No. 304). The Court held a hearing on these matters on March 27, 2008. Having
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`considered the arguments and the briefing, the Court DISMISSES Defendants’ Motions to Stay
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`(Dkt. Nos. 301 & 302) and GRANTS Defendants’ Motions to Transfer (Dkt. No. 303) and Change
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`Venue (Dkt. No. 304).
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`I.
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`BACKGROUND
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`Micron filed a declaratory judgment action against Mosaid in the Northern District of
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`California on July 24, 2006 (the “California action”). Complaint, Micron v. Mosaid, No. C06-04496
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`(N.D. Cal. filed July 24, 2006). Micron sought a declaratory judgment as to the “Lines Family
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`Patents” (U.S. Patent Nos. 5,214,602, 5,751,643, 5,822,253, 6,278,640, and 6,603,703), the “Foss
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`Family Patents” (U.S. Patent Nos. 5,828,620, 6,055,201, 6,236,581, and 6,580,654), the “Cell Plate
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`1
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`Family Patents” (U.S. Patent No. 6,057,676), the “Delayed Locked Loop Family Patents” (U.S.
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`Patent Nos. 6,067,272, 6,657,919, and 6,992,950), and the “Bit-Line Isolation Family Patents” (U.S.
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`Patent No. RE 37,641). Id. at 10-12. Mosaid filed its complaint the next day in the Eastern District
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`of Texas (the “Texas action”). Complaint, Dkt. No. 1. In its most recent complaint, Mosaid asserts
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`four of the five “Lines Family Patents” (specifically U.S. Patent Nos. 5,751,643, 5,822,253,
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`6,278,640, and 6,603,703), two of the four “Foss Family Patents” (specifically U.S. Patent Nos.
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`5,828,620, and 6,236,581), two of the three “Delayed Locked Loop Family Patents” (specifically
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`U.S. Patent Nos. 6,657,919 and 6,992,950), and additionally asserts U.S. Patent Nos. 7,038,937,
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`6,980,448, 5,406,523, and 6,847,573. Second Amended Complaint, Dkt. No. 39 at 3-4. Thus, eight
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`of the patents asserted in the California action are asserted in the pending Texas action.
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`The Northern District of California dismissed the action for lack of subject matter
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`jurisdiction applying the reasonable apprehension of suit test. Micron Tech. Inc., v. Mosaid Techs.,
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`Inc., No. C06-4496, 2006 U.S. Dist. LEXIS 81510, at *4-*5 (N.D. Cal. Oct. 23, 2006) (order
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`dismissing action for lack of subject matter jurisdiction). The Federal Circuit reversed the district
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`court’s decision in light of the Supreme Court’s decision in MedImmune Inc. v. Genentech Inc., 127
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`S. Ct. 764 (2007). Micron Tech. Inc. v. Mosaid Techs, Inc., 518 F.3d 897, 899 (Fed. Cir. 2008). The
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`Federal Circuit denied Micron’s petition for rehearing on April 7, 2008.
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`The Court had previously denied Micron’s Motion to Stay Pending a Decision by the United
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`States Court of Appeals for the Federal Circuit (Dkt. No. 92). Dkt. No. 98 at 1. The Court advised
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`Micron that it could re-file its motion upon a decision by the Federal Circuit. Id. Both defendants
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`now seek a stay, dismissal and transfer.
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`2
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`II. LEGAL PRINCIPLES
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`The “first-to-file” rule “comes into play when a plaintiff files similar lawsuits in two
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`different federal districts.” Dillard v. Merrill Lynch, Pierce, Fenner & Smith, Inc., 961 F.2d 1148,
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`1161 n.28 (5th Cir. 1992). The rule allows a district court to dismiss, stay, or transfer a case where
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`“issues presented can be resolved in an earlier-filed action pending in [the first filed] court.” West
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`Gulf Maritime Ass’n v. ILA Deep Sea Local, 751 F.2d 721, 729 (5th Cir. 1985). The “first-to-file”
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`rule may affect an action when there is “substantial overlap” between it and a pending action in
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`another federal district court. See Datamize, Inc. v. Fidelity Brokerage Servs., LLC, et al., 2004 WL
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`1683171 (E.D. Tex. 2004).
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`The Fifth Circuit generally follows the first-to-file rule. See West Gulf, 751 F.2d at 730.
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`“The federal courts have long recognized that the principle of comity requires federal district courts
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`– courts of coordinate jurisdiction and equal rank – to exercise care to avoid interference with each
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`other’s affairs.” Id. at 728. The “first-to-file” rule is based on “principles of comity and sound
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`judicial administration.” Save Power Ltd. v. Syntek Fin. Corp., 121 F.3d 947, 950 (5th Cir. 1997);
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`see, generally, West Gulf, 751 F.2d at 729. The general principle in the interrelation of federal
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`district courts is to avoid duplicative litigation. Colo. River Water Conservation Dist. v. United
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`States, 424 U.S. 800, 817 (1976). Federal courts should try to avoid the waste of duplication, rulings
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`that may trench upon the authority of sister courts, and piecemeal resolution of issues that call for
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`a uniform result. West Gulf, 751 F.2d at 729.
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`In deciding whether to apply the first-to-file rule, the Court must resolve two questions: (1)
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`are the two pending actions so duplicative or do they involve such substantially similar issues that
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`one court should decide the subject matter of both actions, and if so, (2) which of the two courts
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`should take the case. Texas Instruments v. Micron Semiconductor, 815 F.Supp. 994, 997 (E.D.
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`Tex.1993). “Once the likelihood of substantial overlap between the two suits has been
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`demonstrated, it is no longer up to the second-filed court to resolve the question of whether both
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`should be allowed to proceed.” Cadle Co. v. Whataburger of Alice, Inc., 174 F.3d 599, 605-06 (5th
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`Cir.1999) (quoting Mann Mfg., Inc., v. Hortex, Inc., 439 F.2d 403, 407 (5th Cir.1971)). Instead, “the
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`proper course of action [is] for the [second-filed] court to transfer the case” to the first-filed court.
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`Id. at 606. It is then the responsibility of the first-filed court to decide “whether the second suit filed
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`must be dismissed, stayed, or transferred and consolidated.” Sutter Corp. v. P & P Indus., Inc., 125
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`F.3d 914, 920 (5th Cir. 1997).
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`III.
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`DISCUSSION
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`Micron argues that the claims relating to all 12 patents should be transferred to the Northern
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`District of California. Dkt. No. 303 at 2 & 5. Micron states that the Federal Circuit held that the
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`Northern District of California should have applied the convenience factors of § 1404(a) and it
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`would be an “abuse of discretion” to transfer the action out of California. Id. at 2 & 7. With regard
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`to the eight common patents between the two districts, Micron argues that the same issues are
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`pending in an earlier-filed action and thus the claims should be dismissed. Id. at 6 (citing West Gulf,
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`751 F.3d at 729). Regarding the remaining four patents that are not asserted in California, Micron
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`argues that there is a substantial overlap in issues relating to claim construction, invalidity, and non-
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`infringement that would result in “substantially the same experts, fact witnesses, and documents.”
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`Id. (citing Nat’l Instruments Corp. v. Softwire Tech., LLC, 2003 U.S. Dist. LEXIS 26952, at *2 (E.D.
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`Tex. 2003)).
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`Regarding the convenience factors, Micron reiterates that the Federal Circuit has already
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`found the Northern District of California to be the appropriate forum. Dkt. No. 303 at 7. Moreover,
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`Micron notes that Mosaid’s U.S. operations are based in California, and both Mosaid’s and Micron’s
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`trial counsels are in the Northern District of California. Id. at 7 (citing Dkt. No. 303, Exhs. 5-6).
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`Powerchip adds that the primary inquiry regarding a transfer is the question of “substantial overlap.”
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`Dkt. No. 304 at 5. Powerchip argues that the private interest factors weigh in favor of transfer,
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`citing that it would be more convenient for Powerchip’s witnesses to travel to San Francisco than
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`to Marshall, Texas. Id. at 11 (citing Hanby v. Shell Oil Co., 144 F. Supp. 2d 673, 676 (E.D. Tex.
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`2001)). Powerchip notes that this factor is in favor of transfer and the other private interest factors
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`are neutral. Id. at 11-13.
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`In response to Powerchip, Mosaid argues that Powerchip’s contention that there are duplicate
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`actions is incorrect. Dkt. No. 336 at 6. Mosaid further contends that even if the California case was
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`the first-filed case, many of the courts in the Eastern District have declined to follow the rule. Id.
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`at 7 (citing MediaTek, Inc. v. Sanyo Elec. Co., 2006 WL 463871, at *3 (E.D. Tex. Feb. 17, 2006);
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`Cummins-Allison Corp. v. Glory Ltd., 2004 U.S. Dist. LEIS 13839, at *7 (E.D. Tex. May 26, 2004)).
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`Here, the Court finds that the technology in the California action significantly overlaps with
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`the technology in the Texas action. Eight of the patents are overlapping between the two cases, and
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`the remaining four patents are related in technology to these patents. Thus, the Court finds that the
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`Texas action would be duplicative and should be decided by the Northern District of California.
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`Moreover, although Mosaid’s action against Powerchip is first-filed in the Texas action, in the
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`interest of judicial economy, the Court determines that Powerchip’s portion should likewise be
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`transferred to the Northern District of California. Catch Curve, Inc. v. Venali, Inc., 2006 U.S. Dist.
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`LEXIS, at *9 (C.D. Cal. Feb. 27, 2006) (stating that “[j]udicial economy weighs heavily in favor of
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`keeping two or more related patent actions in the same forum.”). Also, the Northern District of
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`California recently issued an order denying Mosaid’s motion to transfer the California action to the
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`Eastern District of Texas, noting that “Powerchip has moved to intervene in the [California] action,
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`which further weakens Mosaid’s argument that the Eastern District of Texas is the more appropriate
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`forum because it is the only forum in which all patents are before the court.” Micron Technology,
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`Inc. v. Mosaid Technologies, Inc., Case No. C 06-4496 JF (RS), Dkt. No. 100 (N.D. Cal. filed June
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`17, 2008) (order denying motion to transfer), available at, Dkt. No. 404, Exh. 1 at 3.
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`IV.
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`CONCLUSION
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`For the foregoing reasons, the Court DISMISSES Defendants’ Motions to Stay (Dkt. Nos.
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`301 & 302) as MOOT and GRANTS Defendants’ Motions to Transfer (Dkt. No. 303) and Change
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`Venue (Dkt. No. 304).
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`It is so ORDERED.
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