Case 6:20-cv-00881-ADA Document 22 Filed 11/19/20 Page 1 of 22
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`SONOS, INC.,
`Plaintiff,
`
`vs.
`GOOGLE LLC,
`Defendant.
`
`Case No. 6:20-cv-00881-ADA
`
`GOOGLE LLC’S RULE 12(B)(3) MOTION TO STAY OR DISMISS PURSUANT TO
`THE FIRST-TO-FILE RULE
`
`

`

`Case 6:20-cv-00881-ADA Document 22 Filed 11/19/20 Page 2 of 22
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`II.
`
`III.
`
`IV.
`
`V.
`
`INTRODUCTION ............................................................................................... 1
`BACKGROUND ................................................................................................. 2
`A.
`The First-Filed California Action ............................................................. 2
`B.
`The Second-Filed Texas Action ............................................................... 3
`C.
`The Court In The First-Filed Case Is Considering The First-To-File
`Issues ....................................................................................................... 3
`The Parties Agreed To Litigate In California. ........................................... 3
`D.
`LEGAL STANDARD ......................................................................................... 4
`A.
`First-To-File Rule .................................................................................... 4
`ARGUMENT ...................................................................................................... 5
`A.
`This Case Should Be Stayed Or Dismissed Pursuant To The First-To-File
`Rule. ........................................................................................................ 5
`1.
`This Case And The California Action Are Substantially Similar. .. 6
`2.
`This Court Should Stay This Case Pending The Outcome Of
`Sonos’s Motion To Dismiss In The California Action. .................. 7
`In The Alternative, The Court Should Decline To Exercise
`Jurisdiction And Dismiss The Case Pursuant To Rule 12(b)(3). .... 8
`No Compelling Circumstances Exist That Would Justify Departing
`From The First-To-File Rule......................................................... 9
`(a)
`The Northern District Is The Most Convenient Forum. .... 10
`CONCLUSION ................................................................................................. 17
`
`3.
`
`4.
`
`-i-
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`

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`Case 6:20-cv-00881-ADA Document 22 Filed 11/19/20 Page 3 of 22
`
`TABLE OF AUTHORITIES
`
`Page
`
`CASES
`Amerifreight, Inc. v. Belacon Pallet Servs., LLC,
`No. 2:15-cv-5607 RSWL (JPRx), 2015 U.S. Dist. LEXIS 189989 (C.D. Cal. Nov.
`10, 2015) .........................................................................................................................5
`Cameron Int’l Corp. v. Nitro Fluids L.L.C.,
`No. 6:20-cv-00125-ADA, 2020 WL 3259809 (W.D. Tex. June 16, 2020) ............... passim
`Cummins-Allison Corp. v. Glory Ltd.,
`No. 2–03–CV–358TJ, 2004 WL 1635534 (E.D. Tex. May 26, 2004) ...............................7
`DataQuill, Ltd. v. Apple Inc.,
`No. A–13–CA–706–SS, 2014 WL 2722201 (W.D. Tex. June 13, 2014) ........................ 13
`Freehold Licensing, Inc. v. Aequitatem Capital Partners, LLC,
`No. 18-CV-413 LY, 2018 WL 5539929 (W.D. Tex. Oct. 29, 2018) ............................... 14
`Gateway Mortg. Grp., L.L.C. v. Lehman Bros. Holdings, Inc.,
`694 Fed. App’x. 225 (5th Cir. 2017) ................................................................................9
`Google LLC v. Sonos, Inc.,
`No. 3-20-cv-06754 (N.D. Cal. Sep. 28, 2020) ..................................................................2
`In re Acer America Corp.,
`626 F.3d 1252 (Fed. Cir. 2010) ...................................................................................... 15
`In re Adobe Inc.,
`823 Fed.App’x. 929 (Fed. Cir. 2020) ............................................................................. 17
`In re Apple Inc.,
`No. 2020-135, – F.3d –, 2020 WL 6554063 (Fed. Cir. Nov. 9, 2020) ....................... 16, 17
`In re Genentech,
`566 F.3d 1338 (Fed. Cir. 2009) ................................................................................ 11, 16
`In re Google Inc.,
`No. 17-0107, 2017 WL 977038 (Fed. Cir. Feb. 23, 2017) ............................................. 11
`In re Hoffmann-La Roche Inc.,
`587 F.3d 1333 (Fed. Cir. 2009) ................................................................................ 12, 16
`In re Nintendo Co., Ltd.,
`589 F.3d 1194 (Fed. Cir. 2009) ...................................................................................... 11
`In re Nitro Fluids LLC,
`No. 20-142, – F.3d –, 2020 WL 6301719 (Fed. Cir. Oct. 28, 2020). ...................... 1, 5, 10
`In re Volkswagen of Am. Inc.,
`545 F.3d 304 (5th Cir. 2008) .......................................................................................... 10
`
`-ii-
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`

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`Case 6:20-cv-00881-ADA Document 22 Filed 11/19/20 Page 4 of 22
`
`Lear Siegler Services v. Ensil Int’l. Corp., No. SA-05-CA-0679-XR, 2005 WL 2645008
`(W.D. Tex. Sep.. 20, 2005) ..............................................................................................8
`Mann Mfg., Inc. v. Hortex, Inc.,
`439 F.2d 403 (5th Cir. 1971) ........................................................................................ 5, 8
`Pacesetter Sys. v. Medtronic, Inc.,
`678 F.2d 93 (9th Cir. 1982)..............................................................................................9
`Parallel Networks, LLC v. Microsoft Corp.,
`No. 2:09-cv-172, 2009 WL 10708739 (E.D. Tex. Aug. 3, 2009) .................................. 6, 7
`Platt v. Nash,
`No. 4:16-CV-00294, 2016 U.S. Dist. LEXIS 142265 (E.D. Tex. Oct. 14, 2016) ..............5
`Rooster Prods. Int’l, Inc. v. Custom Leathercraft Mfg. Co., Inc.,
`No. SA:04-CA-864-XR, 2005 WL 357657 (W.D. Tex. Feb. 1, 2005) ........................ 9, 10
`Ruckus Wireless, Inc. v. Harris Corp.,
`No. 11-CV-01944-LHK, 2012 U.S. Dist. LEXIS 22336 (N.D. Cal. Feb. 22, 2012), .........8
`Sanofi-Aventis Deutschland GmbH v. Novo Nordisk, Inc.,
`614 F. Supp. 2d 772 (E.D. Tex. 2009) .......................................................................... 6, 7
`Save Power Ltd. v. Syntek Finance Corp.,
`121 F.3d 947 (5th Cir. 1997) ...................................................................................... 5, 10
`SIPCO, LLC v. Emerson Elec. Co.,
`No. 6:15-CV-907, 2016 WL 7743496 (E.D. Tex. July 1, 2016).......................................6
`Sutter Corp. v. P & P Indus., Inc.,
`125 F.3d 914 (5th Cir. 1997) ............................................................................................5
`Texas Instruments Inc. v. Micron Semiconductor, Inc.,
`815 F.Supp. 994 (E.D. Tex. 1993) ...................................................................................8
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795 (Fed. Cir. 1999) ..........................................................................................8
`VOIP-Pal.com, Inc. v. Apple Inc.,
`No. 6:20-cv-275-ADA, Dkt. 43 (W.D. Tex. Sept. 29, 2020) ............................................7
`
`STATUTES
`28 U.S.C. § 1404(a) .............................................................................................................. 3, 10
`
`RULES
`Fed. R. Civ. P. 45(c)(1)(A) ........................................................................................................ 15
`Fed. R. Civ. P. 45(c)(1)(B) ........................................................................................................ 13
`
`-iii-
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`

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`Case 6:20-cv-00881-ADA Document 22 Filed 11/19/20 Page 5 of 22
`
`I.
`
`INTRODUCTION
`Defendant Google LLC (“Google”) respectfully moves to stay or dismiss this case under
`
`the first-to-file rule. The first-to-file rule dictates that “the court in which an action is first filed
`
`should determine whether subsequently filed cases involving substantially similar issues should
`
`proceed.” Cameron Int’l Corp. v. Nitro Fluids L.L.C., No. 6:20-cv-00125-ADA, 2020 WL
`
`3259809, at *2 (W.D. Tex. June 16, 2020), abrogated on other grounds by In re Nitro Fluids LLC,
`
`No. 20-142, – F.3d –, 2020 WL 6301719 at *2-3 (Fed. Cir. Oct. 28, 2020).
`
`This is the second-filed case between the parties because Google filed a declaratory
`
`judgment action in the Northern District of California (the “Northern District”) the day before
`
`Sonos filed this case. And there is no question that the two cases raise “substantially similar
`
`issues.” Indeed, this case is a mirror image of the California case because they involve the exact
`
`same patents and accused products.
`
`Given the overlap, the Court should stay this case while the California court considers
`
`which case should proceed. Sonos has already moved to dismiss Google’s first-filed case in favor
`
`of this one, and the parties have fully briefed those issues. The Honorable William H. Alsup, who
`
`is presiding over the first-filed case, is holding a hearing on Sonos’s motion to dismiss today.
`
`In the alternative, the Court may decline to exercise jurisdiction and dismiss this case. If
`
`Judge Alsup denies Sonos’s motion to dismiss, the issues raised by Sonos’s Complaint in this case
`
`will be completely resolved by Google’s declaratory judgment action in the Northern District. The
`
`infringement claims before this Court are compulsory counterclaims to Google’s declaratory non-
`
`infringement claims in California, and Sonos has stated that it will present its infringement claims
`
`in the Northern District should the case proceed there.
`
`-1-
`
`

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`Case 6:20-cv-00881-ADA Document 22 Filed 11/19/20 Page 6 of 22
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`Under Fifth Circuit law and principles of comity, once a court determines that the two cases
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`are “substantially similar,” that is the end of the analysis. Google recognizes that this Court has
`
`gone further and analyzed the convenience factors typically considered in motions to transfer under
`
`28 U.S.C. § 1404(a) when analyzing whether there are any “compelling circumstances” that
`
`warrant departure from the first-to-file rule. But to the extent the Court utilizes the 28 U.S.C. §
`
`1404(a) factors in evaluating whether compelling circumstances exist in this case, those factors do
`
`not weigh in favor of proceeding in this District. Sonos has not identified any relevant witnesses
`
`or evidence in this District, and this District does not bear any relevant connection to this case.
`
`II.
`
`BACKGROUND
`A.
`The First-Filed California Action
`On September 28, 2020, Sonos sent Google a copy of a proposed complaint it said it would
`
`file in this District the next day. Cooper Decl. Ex. 1. Upon receiving Sonos’s letter, Google
`
`investigated Sonos’s allegations and filed a declaratory judgment action in the Northern District
`
`of California. Google LLC v. Sonos, Inc., No. 3-20-cv-06754 (N.D. Cal. Sep. 28, 2020) (the
`
`“California Action”). Cooper Decl., Ex. 2. The California Action seeks a declaratory judgment
`
`that certain Chromecast, Home, Nest, Google Play Music, YouTube and Pixel products1 do not
`
`infringe United States Patent Nos. 9,967,615 (“the ‘615 patent”); 10,779,033 (“the ‘033 patent”),
`
`9,344,206 (“the ‘206 patent”); 10,469,966 (“the ‘966 patent”); and 9,219,460 (“the ‘460 patent”).
`
`Cooper Decl. Ex. 2. The California Action is the first-filed case.
`
`1 The full list of products at issue in the California case includes Chromecast, Chromecast
`Ultra, Chromecast Audio, Chromecast with Google TV, Home Mini, Nest Mini, Home, Home
`Max, Home Hub, Nest Hub, Nest Hub Max, Nest Audio, Nest Wifi Point, YouTube Music app,
`Google Play Music app, YouTube app, Google Home app, and Pixel phones, tablets, and laptops.
`Cooper Decl. Ex. 2.
`
`-2-
`
`

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`Case 6:20-cv-00881-ADA Document 22 Filed 11/19/20 Page 7 of 22
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`The Second-Filed Texas Action
`B.
`The day after Google filed the California Action, Sonos filed the instant case. Dkt. 1. This
`
`case is the mirror image of the California Action, involving infringement allegations for the same
`
`accused products and the same five patents-in-suit. See Dkt. 1 and Cooper Decl. Ex. 2. This case
`
`is the second-filed case.
`
`The Court In The First-Filed Case Is Considering The First-To-File Issues
`C.
`Sonos moved to dismiss the first-filed California Action on October 12, 2020, and the
`
`parties have fully briefed the first-to-file issues before the California court. Cooper Decl. Exs. 3,
`
`4, 5. Among other things, the parties have fully briefed whether the Northern District is a more
`
`convenient forum under the 28 U.S.C. § 1404(a) factors, which Federal Circuit and Ninth Circuit
`
`law requires the first-filed court to consider as part of its first-to-file analysis, and (as Sonos
`
`contends) whether any exceptions to the first-to-file rule apply. Id.2 The Honorable William H.
`
`Alsup, who is presiding over the first-filed case, is holding a hearing on Sonos’s motion to dismiss
`
`today. Cooper Decl. Ex. 6.
`
`The Parties Agreed To Litigate In California.
`D.
`Sonos and Google have a long history of collaboration. Dkt. 1 ¶¶ 11-15 (Dkt. 1 ¶ 12 (noting
`
`that “Sonos worked with Google to integrate the Google Play Music service into the Sonos
`
`ecosystem” and, as a result of these efforts, “Google Play Music launched on the Sonos platform
`
`in 2014”). Sonos’s Complaint puts this collaboration at issue. See e.g., id. at ¶ 11 (“Google sought
`
`to work with Sonos and, through those efforts, gained access to Sonos’s engineers, products, and
`
`technology. All too quickly, however, Google shifted focus and began to develop and sell products
`
`that copied Sonos’s technology and infringed Sonos’s patents.”), id. ¶ 14 (“Just eighteen months
`
`2 Google maintains that the Northern District is a more convenient forum to litigate this
`dispute under 28 U.S.C. § 1404(a), and specifically reserves its right to file a motion to transfer in
`this District should Judge Alsup grant Sonos’s motion to dismiss.
`
`-3-
`
`

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`Case 6:20-cv-00881-ADA Document 22 Filed 11/19/20 Page 8 of 22
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`Case 6:20-cv-00881-ADA Document 22 Filed 11/19/20 Page
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`later [after the launch of Google Play Music on the Sonos
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`platform in 2014], in 2015, Google
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`began willfully infringing
`
`Sonos’s patents. On information and
`
`it had
`
`gleaned
`
`from Sonos to build and launch its first wireless multi-room audio
`
`belief, Google used the knowledge
`—
`
`product
`
`Chromecast Audio.”).
`
`Both Sonos and
`
`Google
`
`are based in California. Dkt.
`
`1 §§ 1, 43-44.
`
`Accordingly,
`
`throughout the collaboration that Sonos discusses in its Complaint, Google and Sonos
`
`repeatedly
`
`to thei relationship and that such
`agreed that California law would govern disputes relating
`disputes would be resolved in California. For example, in the parties’
`Po
`Sonos and Google agreed to litigate disputes regarding the agreement in
`
`Po
`
` Cooper Decl. Ex. 7 § 10.2 (emphasis added). The parties’
`
`PO
`specifically incorporates the forum selection clause from the parties’
`20220001. Cooper Decl Ex. 5 §
`
`RE
`
`|
`
`PO
`
`Ii.
`
`LEGAL STANDARD
`
`A.
`
`First-To-File Rule
`
`This Court applies Fifth Circuit law on
`
`procedural, non-patentissues.? CameronInt’l, 2020
`
`WL 3259809, at *2. The Fifth Circuit follows the “first-to-file” rule in determining howdistrict
`
`3
`
`In the parties’ briefing in the California Action, both sides agreed that Federal Circuit
`to the first-to-file analysis. Cooper Decl. Ex. 3, 4.
`that this
`precedent applies
`Google recognizes
`to these issues (Cameron Int’], 2020 WL 3259809, at
`Court has
`applied Fifth Circuit precedent
`*2), and that the Federal Circuit has accepted this Court’s use of Fifth Circuit precedent.
`Jn re:
`Nitro, 2020 WL 6301719, at *2 n.2.
`
`-4-
`
`

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`Case 6:20-cv-00881-ADA Document 22 Filed 11/19/20 Page 9 of 22
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`courts should address substantially similar issues in separately-filed cases. Id. (citing Sutter Corp.
`
`v. P & P Indus., Inc., 125 F.3d 914, 920 (5th Cir. 1997)). The first-to-file rule dictates that “the
`
`court in which an action is first filed should determine whether subsequently filed cases involving
`
`substantially similar issues should proceed.” Id. The first-to-file rule also provides that “the first-
`
`filed court may decide whether the second suit filed must be dismissed, stayed, or transferred and
`
`consolidated” while the first-filed court considers the first-to-file issues. Id. “Once the likelihood
`
`of substantial overlap between the two suits has been demonstrated, it [i]s no longer up to the
`
`[second-filed court] to resolve the question of whether both should be allowed to proceed.” Save
`
`Power Ltd. v. Syntek Finance Corp., 121 F.3d 947, 950 (5th Cir. 1997) citing Mann Mfg., Inc. v.
`
`Hortex, Inc., 439 F.2d 403, 408 (5th Cir. 1971).
`
`IV.
`
`ARGUMENT
`A.
`This Case Should Be Stayed Or Dismissed Pursuant To The First-To-File
`Rule.
`The California Action is the first-filed case, and the first-to-file rule applies. Consistent
`with that rule, Google respectfully requests that this Court stay this case until Judge Alsup decides
`which case will proceed or, in the alternative, dismiss this case without prejudice.4
`
`4 In the California Action, Sonos has argued that the anticipatory and bad faith exceptions to
`the first-to-file rule apply, which warrants dismissing the California Action or transferring it to this
`District. Cooper Decl. Ex. 3. As Google explained in the parties’ briefing before the California
`court, these exceptions do not apply. The anticipatory suit exception exists to prevent forum
`shopping and Google was not forum shopping because the Northern District is its home district.
`Google’s complaint was also not brought in bad faith: Google does not infringe and thus has a
`basis for alleging non-infringement. In any event, as explained in more detail herein, the
`applicability of any exceptions to the first-filed rule are for the court in the first-filed case to decide.
`See Platt v. Nash, No. 4:16-CV-00294, 2016 U.S. Dist. LEXIS 142265, at *5 (E.D. Tex. Oct. 14,
`2016) (“the question of whether the first-filed action was an improper anticipatory filing is for the
`first-filed court to determine”); Amerifreight, Inc. v. Belacon Pallet Servs., LLC, No. 2:15-cv-5607
`RSWL (JPRx), 2015 U.S. Dist. LEXIS 189989, at *10 (C.D. Cal. Nov. 10, 2015) (first-filed court
`is the appropriate forum to determine whether an equitable exception, such as bad faith, to the
`first-to-file rule applies).
`
`-5-
`
`

`

`Case 6:20-cv-00881-ADA Document 22 Filed 11/19/20 Page 10 of 22
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`1.
`This Case And The California Action Are Substantially Similar.
`Under Fifth Circuit law, the first inquiry is whether the cases are substantially similar.
`
`Cameron Int’l, 2020 WL 3259809, at *2; Sanofi-Aventis Deutschland GmbH v. Novo Nordisk,
`
`Inc., 614 F. Supp. 2d 772, 775 (E.D. Tex. 2009) (describing the first determination as “whether
`
`the actions are so duplicative, or involve such substantially similar issues, that one court should
`
`decide both actions.”). In the patent context, two cases are “substantially similar” if they involve
`
`“the same parties, the same technology, the same inventors, overlapping remedies, the same
`
`witnesses, or overlapping issues in claim construction.” SIPCO, LLC v. Emerson Elec. Co., No.
`
`6:15-CV-907, 2016 WL 7743496, at *2 (E.D. Tex. July 1, 2016).
`
`The two cases here are more than just “substantially similar”—this case is a mirror image
`
`of the California Action. In this case, Sonos alleges that Google’s Chromecast, Home, Nest,
`
`Google Play Music, YouTube and Pixel products infringe the five patents-in-suit. Dkt. 1. In the
`
`California Action, Google seeks a declaration that the same products do not infringe the same five
`
`patents. Supra § II.A.
`
`Sonos agrees that the cases are substantially similar. Cooper Decl. Ex. 3 at 5
`
`(acknowledging that the two cases involve “the same parties and issues”). And courts consistently
`
`deem mirror-image patent infringement and declaratory judgment actions to be “substantially
`
`similar” for the purposes of the first-to-file rule when they involve the same patents. E.g., Sanofi-
`
`Aventis, 614 F. Supp. 2d at 775 (mirror image infringement and declaratory judgment claims
`
`involving the same patent were “substantially similar” for the purposes of the first-to-file analysis);
`
`Parallel Networks, LLC v. Microsoft Corp., No. 2:09-cv-172, 2009 WL 10708739, at *3 (E.D.
`
`Tex. Aug. 3, 2009) (same).
`
`-6-
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`

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`Case 6:20-cv-00881-ADA Document 22 Filed 11/19/20 Page 11 of 22
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`2.
`
`This Court Should Stay This Case Pending The Outcome Of Sonos’s
`Motion To Dismiss In The California Action.
`It is well-established that it is the responsibility of the first-filed court to decide which of
`
`the two cases should proceed. Cameron Int’l, 2020 WL 3259809, at *2 (W.D. Tex. June 16, 2020)
`
`(“The first-to-file rule dictates that the court in which an action is first filed should determine
`
`whether subsequently filed cases involving substantially similar issues should proceed”); Parallel
`
`Networks, 2009 WL 10708739, at *2 (the first-filed court is the one that will decide “whether the
`
`second suit filed must be dismissed, stayed, or transferred and consolidated”); Cummins-Allison
`
`Corp. v. Glory Ltd., No. 2–03–CV–358TJ, 2004 WL 1635534, at *3 (E.D. Tex. May 26, 2004)
`
`(“[T]he ‘first-to-file’ rule gives the first-filed court the responsibility to determine which case
`
`should proceed.”) (emphasis in original). And the issues that need to be resolved by the first-filed
`
`court are already under consideration as Judge Alsup is holding a hearing on Sonos’s motion to
`
`dismiss the California Action today.
`
`Under similar circumstances, courts have stayed the second-filed case until the first-filed
`
`court has resolved issues related to the first-to-file rule. In Sanofi, the court addressed a patent
`
`infringement case that was filed three days after a declaratory judgment action on the same issues.
`
`The court stayed the second-filed case pending resolution of “concerns regarding jurisdiction” in
`
`the first-filed case. 614 F. Supp. 2d at 782. In VOIP-Pal.com, Inc. v. Apple Inc., No. 6:20-cv-275-
`
`ADA, Dkt. 43 (W.D. Tex. Sept. 29, 2020), Apple and other defendants urged this Court to stay the
`
`actions while the Northern District considered the parties’ motions to dismiss based on the first-
`
`filed rule. This Court granted the parties’ motion to stay “until the Northern District of California
`
`enters an order on the pending motions to dismiss.” Id.; see also Parallel Networks, 2009 WL
`
`10708739, at *3 (staying second-filed patent infringement case pending resolution of defendant’s
`
`motion to dismiss in the first-filed declaratory judgment case); Lear Siegler Services v. Ensil Int’l.
`
`Corp., No. SA-05-CA-0679-XR, 2005 WL 2645008, at *3 (W.D. Tex. Sep.. 20, 2005) (same);
`
`-7-
`
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`Case 6:20-cv-00881-ADA Document 22 Filed 11/19/20 Page 12 of 22
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`Texas Instruments Inc. v. Micron Semiconductor, Inc., 815 F.Supp. 994, 999 (E.D. Tex. 1993)
`
`(same).
`
`3.
`
`In The Alternative, The Court Should Decline To Exercise Jurisdiction
`And Dismiss The Case Pursuant To Rule 12(b)(3).
`In the alternative, the Court may decline to exercise jurisdiction and dismiss the second-
`
`filed case without prejudice. Mann Mfg., 439 F.2d at 408; Cameron Int’l, 2020 WL 3259809, at
`
`*2 (“When related cases are pending before two federal courts, the court in which the case was
`
`last filed may refuse jurisdiction if the issues raised by the cases substantially overlap.”).
`
`If Judge Alsup denies Sonos’s motion to dismiss, the issues raised by Sonos’s Complaint
`
`in this case will be resolved by Google’s declaratory judgment action in the Northern District.
`
`Indeed, the infringement claims that Sonos has presented to this Court are compulsory
`
`counterclaims to Google’s declaratory non-infringement claims in the Northern District, and Sonos
`
`has stated that it will present its infringement claims there if required. Vivid Techs., Inc. v. Am.
`
`Sci. & Eng’g, Inc., 200 F.3d 795, 801 (Fed. Cir. 1999) (infringement claim is a compulsory
`
`counterclaim to a declaratory judgment claim of non-infringement for the same patent). If Judge
`
`Alsup grants Sonos’s motion, he can either transfer that case to an appropriate forum or dismiss it
`
`without prejudice. In any event, Sonos will be able to pursue its infringement claims in an
`
`appropriate forum.
`
`Courts in similar situations have dismissed, rather than transferred, mirror-image claims
`
`like the ones Sonos asserts here. In Ruckus Wireless, Inc. v. Harris Corp., No. 11-CV-01944-
`
`LHK, 2012 U.S. Dist. LEXIS 22336, at *15-16 (N.D. Cal. Feb. 22, 2012), the court dismissed
`
`mirror-image declaratory judgment claims that were filed six days after patentee’s infringement
`
`complaint. Crucial to the court’s analysis was the fact that “the Court [wa]s not aware of and
`
`Ruckus ha[d] not suggested that there [we]re any bars to Ruckus’s bringing its compulsory
`
`counterclaims in the [first-filed] Florida Action.” Id. The court dismissed plaintiff’s claims
`
`-8-
`
`

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`Case 6:20-cv-00881-ADA Document 22 Filed 11/19/20 Page 13 of 22
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`without prejudice and instructed plaintiff to refile them before the first-filed court. Id. Similarly,
`
`in Pacesetter Sys. v. Medtronic, Inc., 678 F.2d 93, 96 (9th Cir. 1982), the Ninth Circuit affirmed
`
`dismissal of mirror-image patent infringement claims where “[n]o apparent bar existed to a
`
`presentation of Pacesetter’s claims and defenses before the [first-filed] court,” which was “capable
`
`of efficiently resolving all issues.”5
`
`As in Ruckus Wireless and Pacesetter, there is no bar to Sonos bringing its infringement
`
`claims in the Northern District. Indeed, if the case proceeds in that district, Sonos will be required
`
`to do so. Accordingly, the Court may properly decline to exercise jurisdiction over this second-
`
`filed case and dismiss it under Rule 12(b)(3).
`
`4.
`
`No Compelling Circumstances Exist That Would Justify Departing
`From The First-To-File Rule.
`Under Fifth Circuit law, “[o]nce the likelihood of substantial overlap between the two suits
`
`had been demonstrated, it [i]s no longer up to the court in Texas to resolve the question of whether
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`both should be allowed to proceed.” Save Power, 121 F.3d at 950. Principles of judicial comity
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`likewise require that the question of which case should proceed should be reserved for the court in
`
`the first-filed case, especially when, as here, the first-filed case is currently considering those
`
`issues. Id; Rooster Prods. Int’l, Inc. v. Custom Leathercraft Mfg. Co., Inc., No. SA:04-CA-864-
`
`XR, 2005 WL 357657, at *2 (W.D. Tex. Feb. 1, 2005) (principle behind the first-to-file rule is to
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`avoid duplicative litigation, avoid rulings that may tread upon the authority of sister courts, and
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`avoid piecemeal resolution of issues that call for a uniform result).
`
`Google recognizes that this Court has sometimes gone further and analyzed the 28 U.S.C.
`
`§ 1404(a) convenience factors in connection with analyzing whether there are any “compelling
`
`5 The Fifth Circuit has reached the same result in the non-patent context as well. Gateway
`Mortg. Grp., L.L.C. v. Lehman Bros. Holdings, Inc., 694 Fed. App’x. 225, 226 (5th Cir. 2017)
`(affirming dismissal of second-filed declaratory judgment action where the first-filed case
`implicated substantially similar issues, and where the plaintiff could always “return to the Southern
`District of Texas if its claims are not fully resolved in the Southern District of New York”).
`
`-9-
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`Case 6:20-cv-00881-ADA Document 22 Filed 11/19/20 Page 14 of 22
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`circumstances” that warrant departure from the first-to-file rule. Cameron Int’l, 2020 WL
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`3259809, at *5. However, in this case, unlike Cameron International, the court in the first-filed
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`case is already considering those factors in connection with the first-to-file analysis—and it is
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`doing so at Sonos’s urging. Under these circumstances, this court should defer to the California
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`court’s assessment. Save Power, 121 F.3d at 950; Rooster Prods., 2005 WL 357657, at *2.
`
`In any event, even if this Court were to consider the 28 U.S.C. § 1404(a) factors now, no
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`“sufficiently compelling circumstances” warrant a refusal to apply the first-to-file rule. In
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`evaluating transfer under § 1404(a), courts in this Circuit first consider “whether a civil action
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`‘might have been brought’ in the destination venue.” In re Volkswagen of Am. Inc., 545 F.3d 304,
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`312 (5th Cir. 2008). If so, courts weigh eight private and public factors:
`
`(1) the relative ease of access to sources of proof; (2) the availability of compulsory
`process to secure the attendance of witnesses; (3) the cost of attendance for willing
`witnesses; (4) all other practical problems that make trial of a case easy, expeditious and
`inexpensive[;] … [5] the administrative difficulties flowing from court congestion; [6]
`the local interest in having localized interests decided at home; [7] the familiarity of the
`forum with the law that will govern the case; and [8] the avoidance of unnecessary
`problems of conflict of laws [or in] the application of foreign law.
`Id. at 315 (internal quotations and citation omitted).
`
`The Federal Circuit recently held that the balance of convenience factors must favor
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`“keeping the case in the second-filed court” in order for there to be compelling circumstances that
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`would justify an exception to the first-filed rule. In re Nitro Fluids, 2020 WL 6301719 at *2 (Fed.
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`Cir. Oct. 28, 2020). The party that filed the second-filed case—here, Sonos—bears the burden of
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`proof on this issue. Id. at *2.
`
`(a)
`
`The Northern District Is The Most Convenient Forum.
`(i)
`Sonos Could Have Brought Its Case In The Destination
`Venue.
`Sonos could have brought its case in the Northern District of California. Google is a
`
`California-based company. Google has been headquartered in Northern California since its
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`Case 6:20-cv-00881-ADA Document 22 Filed 11/19/20 Page 15 of 22
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`founding in 1998, and it is currently headquartered in Mountain View, California, which is located
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`in the Northern District. Declaration of Daniel S. Friedland (“Friedland Decl.”) ¶ 2. Furthermore,
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`in connection with the collaboration Sonos put at issue in its Complaint, the parties repeatedly
`
`agreed to litigate in California. Supra § II.II.D; Cooper Decl. Ex. 7.
`
`The Private Interest Factors Weigh Heavily In Favor Of
`Venue In The Northern District.
`Relevant party and third-party evidence is located in the Northern District, and Sonos has
`
`(ii)
`
`not identified any witnesses in this District who have relevant information. The private interest
`
`factors therefore weigh heavily of venue in the Northern District of California.
`
`Convenience Of The Parties And Witnesses
`Favors Venue In The Northern District.
`“The convenience of the witnesses is probably the single most important factor in the
`
`A)
`
`transfer analysis.” In re Genentech, 566 F.3d 1338, 1343 (Fed. Cir. 2009) (internal citation
`
`omitted). In this case, because numerous witnesses are based in California and no known witnesses
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`are based in Texas, this factor strongly favors venue in the Northern District. In re Google Inc.,
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`No. 17-0107, 2017 WL 977038, at *3 (Fed. Cir. Feb. 23, 2017) (California, not Texas, was the
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`proper venue where “the vast majority of Google’s employees—in particular those responsible for
`
`projects relating to the accused products—work and reside in the Northern District”); In re
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`Nintendo Co., Ltd., 589 F.3d 1194, 1199 (Fed. Cir. 2009) (Washington, not Texas, was the proper
`
`venue where “[a]ll of the identified key witnesses in this case are in Washington, Japan, Ohio, and
`
`New York” and “[n]o witnesses live in Texas”); In re Hoffmann-La Roche Inc., 587 F.3d 1333,
`
`1336 (Fed. Cir. 2009) (North Carolina, not Texas, was the proper venue where the “accused drug
`
`was developed and tested” there and relevant witnesses resided there, and Texas had “no
`
`connection” to the case).
`
`Google Witnesses. Google’s main offices are located in the Northern District, and over
`
`% of the company’s U.S. employees—more than
`
` people—work there. Friedland Decl.
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`Case 6:20-cv-00881-ADA Document 22 Filed 11/19/20 Page 16 of 22
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`¶ 3. The Google witnesses that are responsible for the development of (1) Google’s Room EQ
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`feature, which Sonos accuses of infringing the ‘460 patent (Dkt. 1 at 82-83), (2) the functionality
`
`that allows casting playback of Google Play Music, YouTube Music, or YouTube to a Cast
`
`receiver, which Sonos accuses of infringing the ‘615 and ‘033 patents (id. at 24-39), and (3) the
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`functionality that allows creating and managing speaker groupings for media playback, which
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`Sonos accuses of infringing the ‘206 and ‘966 patents (id. at 59-78), are based primarily in the Bay
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`Area. Friedland Decl. ¶¶ 5-11 (identifying nine individuals by name who served as technical leads,
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`product managers and primary engineers working on the