Case 6:20-cv-00881-ADA Document 26 Filed 12/03/20 Page 1 of 6
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`SONOS, INC.,
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`v.
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`GOOGLE LLC,
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`Plaintiff,
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`Defendant.
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`NO. 6:20-cv-00881-ADA
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`JURY TRIAL DEMANDED
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`SONOS, INC.’S OPPOSITION TO GOOGLE LLC’S RULE 12(B)(3) MOTION TO STAY
`OR DISMISS PURSUANT TO THE FIRST-TO-FILE RULE
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`Case 6:20-cv-00881-ADA Document 26 Filed 12/03/20 Page 2 of 6
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`Google’s Rule 12(B)(3) Motion to Stay or Dismiss Pursuant to the First-to-File Rule is
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`dead on arrival. Google asks this Court to “stay this case while the California court considers
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`which case should proceed.” Dkt. 22 at 1. The problem for Google, of course, is that Judge Alsup
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`has already decided that this case should proceed. Ex. B. (“Alsup Order”) at 3. In fact, Google
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`now admits that its motion is moot. Dkt. 25 at 5 (“Google is willing to withdraw its existing Rule
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`12(b)(3) motion now that it is moot”). But instead of withdrawing an admittedly moot motion,
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`Google seeks to waste the Court’s and Sonos’s time and resources by insisting that briefing on its
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`motion go forward.
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`Prior to filing this opposition, Sonos asked Google to confirm that in light of the Court’s
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`recent guidance, Sonos need not file this opposition. Despite having already admitted its motion
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`was moot, Google responded that “our understanding is that Sonos should be filing a response to
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`our 12(b)(3) motion today.” Ex. A. Google’s insistence that this briefing go forward is the
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`definition of frivolous. There is no reasonable basis for Google to continue with this motion
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`because (as Google acknowledges by describing the motion as “moot”), the relevant question has
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`already been decided.
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`1. Google’s Motion is Moot
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`On Monday afternoon, September 28, 2020, Sonos sent Google a courtesy copy of a patent
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`infringement complaint along with a note telling Google that Sonos intended to file the complaint
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`the next day (on Tuesday) in the Western District of Texas. Dkt. 22-4. Google’s response was to
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`race into court in its preferred venue (the Northern District of California) Monday evening with a
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`bare-bones complaint for declaratory judgment. Sonos moved to dismiss Google’s declaratory
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`judgment complaint both because it was a bad faith anticipatory suit and because the complaint
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`Case 6:20-cv-00881-ADA Document 26 Filed 12/03/20 Page 3 of 6
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`failed to adequately plead a claim for declaratory judgment of non-infringement. The case was
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`then assigned to Judge Alsup.
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`In ruling in Sonos’s favor, Judge Alsup concluded that “Google’s choice of forum carries
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`no weight, nor does the fact that it managed to file first.” Ex. B at 3. Accordingly, Judge Alsup
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`decided “the proper course is to stay this case and defer to Judge Albright’s ruling on Google’s
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`just filed motion to transfer under Section 1404 … . If the judge grants such a motion, the
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`undersigned will take the case. If he denies such a motion then our case will remain stayed
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`indefinitely in favor of the Texas action.” Id. at 5.1
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`At the same time that Judge Alsup was considering Sonos’s motion, Google filed the
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`present motion to stay or dismiss. The entire premise of Google’s motion is that Google’s Northern
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`District case should be considered “first filed” and should move forward in lieu of this proceeding.
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`See Dkt. 22 at 1 (“Given the overlap, the Court should stay this case while the California court
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`considers which case should proceed”); see also id. (“If Judge Alsup denies Sonos’s motion to
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`dismiss, the issues raised by Sonos’s Complaint in this case will be completely resolved by
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`Google’s declaratory judgement action in the Northern District”).2 Google reaffirmed as recently
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`as this week that “Google’s existing motion is a Motion to Stay or Dismiss based on a first-filed
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`case.” Dkt. 25 at 3-4 (emphasis added).
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`Judge Alsup has fully considered, and rejected, Google’s contention that its Northern
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`District declaratory judgment complaint be considered a “first filed” case. Google should not be
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`1 According to Google, “Judge Alsup was mistaken when he stated that Google had filed a 1404(a) motion to
`transfer.” Dkt. 25 at 4. But Google intends to file such a motion shortly. Id. at 5.
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`2 While Google’s Motion also discusses the 1404(a) transfer factors, it refused to allow Sonos to treat the motion as
`a transfer motion. See Dkt. 25. Instead, Google intends to file a separate motion to transfer under 28 U.S.C. §
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`1404(a). Id. at 5. In light of this, and the Court’s direction to Google that it should file a separate transfer motion,
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`the 1404-based arguments in Google’s pending motion are moot.
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`allowed to revisit that issue here. Cf. Christianson v. Colt Indus. Operating Corp., 486 U.S. 800,
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`817 (1988) (holding that, “as a rule courts should be loathe to [revisit prior decisions of its own or
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`of a coordinate court] in the absence of extraordinary circumstances”). Revisiting the Northern
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`District’s decision would also be contrary to the purpose of the first-to-file rule. The first-to-file
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`rule is a “generally recognized doctrine of federal comity” which recognizes that “[f]ederal district
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`courts are courts of coordinate jurisdiction and equal rank, and must exercise care to avoid
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`interference with each other’s affairs and duplicative litigation.” Texas Instruments Inc. v. Micron
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`Semiconductor, Inc., 815 F. Supp. 994, 997 (E.D. Tex. 1993). By refusing to withdraw this motion,
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`Google asks this Court to entirely disregard principles of comity and to improperly review the
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`decision made by a coordinate court.
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`2. Google Seeks an Improper Extension
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`Google’s refusal to withdraw its motion appears to be an improper attempt to delay its
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`obligation to respond to Sonos’s complaint. Nearly two weeks have elapsed since Judge Alsup’s
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`order. And as of the time of this filing, 65 days have elapsed since Google was served with the
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`Complaint. See Dkt. 13. Google has yet to file and answer, and now seeks an additional four
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`weeks to do so. Dkt. 25 at 5. By refusing to timely withdraw its motion to dismiss and making
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`Sonos file an opposition brief, Google is simply trying to buy additional time before it need file an
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`answer. The Court should not countenance such behavior.
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`*
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`*
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`In light of Judge Alsup’s order expressly rejecting Google’s argument that its Northern
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`District case is “first filed”, and Google’s own acknowledgment that this motion is moot, the
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`present motion must be denied.
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`Dated: December 3, 2020.
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`Respectfully submitted,
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`By________/s/ Mark D. Siegmund ____
`__________/s/ Mark D. Siegmund
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`Jeffrey L. Johnson
`Texas Bar No. 24029638
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`609 Main Street, 40th Floor
`Houston, TX 77002
`Telephone: 713.658.6400
`Facsimile: 713.658.6401
`jj@orrick.com
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`Clement Seth Roberts (admitted pro hac vice)
`California Bar No. 209203
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`405 Howard St.
`San Francisco, CA 94105
`Telephone: 415.773.5484
`Facsimile: 415.773.5759
`croberts@orrick.com
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`Bas de Blank (admitted pro hac vice)
`California Bar No. 191487
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`1000 Marsh Blvd.
`Menlo Park, CA 94205
`Telephone: 650.614.7343
`Facsimile: 650.614.7401
`bdeblank@orrick.com
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`Alyssa Caridis (admitted pro hac vice)
`California Bar No. 260103
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`777 South Figueroa St., Suite 3200
`Los Angeles, CA 90017
`Telephone: 213.612.2372
`Facsimile: 213.612.2499
`acaridis@orrick.com
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`George I. Lee (admitted pro hac vice)
`Illinois Bar No. 6225430
`Sean M. Sullivan (admitted pro hac vice)
`Illinois Bar No. 6230605
`Rory P. Shea (admitted pro hac vice)
`Illinois Bar No. 6290745
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`Case 6:20-cv-00881-ADA Document 26 Filed 12/03/20 Page 6 of 6
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`J. Dan Smith (admitted pro hac vice)
`Illinois Bar No. 6300912
`LEE SULLIVAN SHEA & SMITH LLP
`656 W. Randolph St., Floor 5W
`Chicago, IL 60661
`Telephone: 312.754.9602
`Facsimile: 312.754.9603
`lee@ls3ip.com
`sullivan@ls3ip.com
`shea@ls3ip.com
`smith@ls3ip.com
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`Mark D. Siegmund
`State Bar No. 24117055
`mark@waltfairpllc.com
`Law Firm of Walt, Fair PLLC.
`1508 North Valley Mills Drive
`Waco, Texas 76710
`Telephone: (254) 772-6400
`Facsimile: (254) 772-6432
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`Attorneys for Plaintiff Sonos, Inc.
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