United States District Court, E.D. New York
For Silver Line: Annie Huang, Becky Thorson, and Ronald J. Schutz, Robins, Kaplan, Miller & Ciresi, New York, NY.
For J-Channel: Timothy Grochocinski and Joseph P. Oldaker, InnovaLaw, PC, Orland Park, IL; Gregory O. Koerner, Koerner Law Firm, New York, NY.
MEMORANDUM AND ORDER
JOSEPH F. BIANCO, United States District Judge.
On November 26, 2013, Silver Line Building Products LLC (" Silver Line" or " plaintiff" ) commenced this action against J-Channel Industries Corporation (" J-Channel" or " defendant" ), seeking a declaratory judgment that windows manufactured, sold, and marketed by Silver Line do not infringe on United States Reissue Patent No. 40,041 (" the '041 patent" ). This is the second action filed concerning the alleged infringement of the '041 reissue patent by Silver Line windows. Approximately six weeks before Silver Line commenced this action against J-Channel, on October 9, 2013, J-Channel filed suit against Silver Line's parent company, Andersen Corporation (" Andersen" ), in the Eastern District of Tennessee, alleging that Silver Line windows infringe on the '041 patent (the " Tennessee Action" ). On December 9, 2013, J-Channel filed in the Tennessee Action an amended complaint, which replaced Andersen with Silver Line as a defendant. On December 23, 2013, Silver Line moved in the Eastern District of Tennessee to transfer the Tennessee Action to this district. That motion remains pending.
Presently before this Court is J-Channel's motion to dismiss, stay, or transfer this action to the Eastern District of Tennessee. For the following reasons, the Court grants J-Channel's motion to stay this action while Silver Line's motion to transfer the Tennessee Action remains pending in the Eastern District of Tennessee. First, the Court determines that the Tennessee Action is the first-filed action under the Federal Circuit's first-to-file rule, which " generally favors pursuing only the first-filed action when multiple lawsuits involving the same claims are filed in different jurisdictions." Merial Ltd. v. Cipla Ltd., 681 F.3d 1283, 1299 (Fed. Cir. 2012). As explained infra, it is clear that the Tennessee Action was filed first, and both the Tennessee Action and this action involve the same patent and the same allegedly infringing products. In such circumstances, it is inconsequential that Silver Line did not become a party to the Tennessee Action until after it commenced this action. Second, having determined that the Tennessee Action is the first-filed action, the Court considers the applicability of any exception to the general rule favoring adjudication in the forum of the first-filed action. Here, in particular, Silver Line asserts that the balance of convenience factors favors this forum over the Eastern District of Tennessee. Because the Tennessee Action is the first-filed action, the Court concludes that the Eastern District of Tennessee is the more appropriate forum to determine whether an exception to the first-to-file rule applies. Accordingly, the Court stays this action pending a decision on Silver Line's pending motion to transfer venue in the Eastern District of Tennessee.
A. The Tennessee Action
On October 9, 2013, J-Channel filed suit in the Eastern District of Tennessee against Andersen and Home Depot
U.S.A., Inc. (" Home Depot" ) for infringement of the '041 patent. ( See Compl., J-Channel Indus. Corp. v. Home Depot U.S.A., Inc., No. 13-CV-606 (E.D. Tenn. Oct. 9, 2013) (" Tenn. Compl." ). Andersen is the parent company of Silver Line, having acquired Silver Line in 2006. (Decl. of Timothy E. Grochocinski ¶ 10, Jan. 15, 2014.) J-Channel alleged that it was the assignee of the '041 reissue patent (Tenn. Compl. ¶ 12), and that Andersen and Home Depot infringed at least one claim of the '041 reissue patent by manufacturing and selling the " Silver Line by Andersen 3000 Series Double-Hung Window" and the " American Craftsman by Andersen 70 Double Hung Fin Vinyl Window" ( id. ¶ ¶ 14-15).
J-Channel has filed similar lawsuits in the Eastern District of Tennessee against other defendants for infringement of the '041 reissue patent. Including the Tennessee Action, there are currently twenty-two pending cases in the Eastern District of Tennessee alleging infringement of the '041 reissue patent. On October 17, 2013, Magistrate Judge C. Clifford Shirley, Jr. of the Eastern District of Tennessee found that these twenty-two cases are related because all allege infringement of the '041 reissue patent, and ordered that all twenty-two cases be assigned to a single district ...