District Judge Joseph Bianco granted defendant J-Channel’s motion to stay the case pending plaintiff Silver Line’s motion to transfer a related case to this district from the Eastern District of Tennessee. Before Silver Line filed the instant declaratory judgment action, alleging that its windows do not infringe U.S. Reissue Patent 40,041 (“the ’041 patent”), J-Channel sued Silver Line’s parent company, Andersen, for infringement of the ’041 patent in the Eastern District of Tennessee (“the Tennessee Action”). After Silver Line commenced the instant case, it replaced Andersen as a defendant in the Tennessee Action. Silver Line then moved to transfer the Tennessee Action to this district, and in response, J-Channel moved to dismiss, stay, or transfer the instant action to the Eastern District of Tennessee.
The first-to-file rule “generally favors pursuing only the first-filed action when multiple lawsuits involving the same claims are filed in different jurisdictions.” Silver Line disputed whether the Tennessee Action qualified as the first-filed action because it did not become a party to that litigation until after the instant case was filed. The Federal Circuit has held that the first-to-file rule applies “[w]hen two actions that sufficiently overlap are filed in different federal district courts, one for infringement and the other for declaratory relief,” and that the first-to-file rule “general favors pursuing only the first-filed action when multiple lawsuits involving the same claims are filed in different jurisdictions.” Moreover, other district courts applied the first-to-file rule when “two concurrent actions ‘involve the same patent and the same allegedly infringing product.’” Here, the court concluded that the Tennessee Action was the first-filed action because both the Tennessee Action and the instant action involve the same patent and the same allegedly infringing products.
Silver Line argued that the court should make an exception to the first-to-file rule because exceptions “may be made if justified by ‘considerations of judicial and litigant economy, and the just and effective disposition of disputes.’” The court, however, noted that the judge in the Eastern District of Tennessee, not this court, should decide whether an exception applies because the first-to-file rule “dictate[s] not only which forum is appropriate, but also which forum should decide which forum is appropriate,’” which is the first forum.
Case: Silver Line Bldg. Prods. LLC v. J-Channel Indus. Corp., No. 13-CV-6561 (JFB) (AKT) (E.D.N.Y. Mar. 24, 2014)