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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE BANK OF AMERICA, N.A. Plaintiff v. SIP ASSETS, LLC AND EVERY PENNY COUNTS, INC. Defendants ) ) ) ) ) ) ) )

C.A. NO. 07-159 GMS

OPENING BRIEF OF EVERY PENNY COUNTS, INC. IN SUPPORT OF ITS MOTION TO DISMISS, TRANSFER VENUE OR STAY

David L. Finger (DE Bar ID #2556) Finger & Slanina, LLC One Commerce Center 1201 Orange Street, Suite 725 Wilmington, DE 19801-1155 (302) 884-6766 Attorney for Defendant Every Penny Counts, Inc. and PHELPS DUNBAR LLP Harvey S. Kauget (FL Bar ID #116254) Karl J. Brandes (FL Bar ID #0329797) Brent B. Barriere (LA Bar ID #2818) David L. Patrón (LA Bar ID #22566) Harry M. Barton (LA Bar ID #29751) 100 South Ashley Drive Suite 1900 Tampa, Florida 33602-5311 (813) 472-7550 Of Counsel for Defendant Every Penny Counts, Inc. DATED: May 10, 2007

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TABLE OF CONTENTS Page NATURE AND STAGE OF THE PROCEEDING..............................................1 SUMMARY OF ARGUMENT.....................................................................3 STATEMENT OF FACTS..........................................................................8 ARGUMENT........................................................................................13 I. II. This Action Should Be Dismisses Pursuant to 12(b)(3)...............................14 This Action Should Be Transferred to the District Court for the Middle District of Florida.................................................................19 A. B. This Action Could Have Been Brought In Florida...........................19 The Relevant §1404(a) Considerations Support Transfer to the Middle District of Florida.......................................................20 1. 2. 3. 4. 5. 6. 7. Interests of Justice and Practical Considerations Related to the Expeditiousness of Trial.........................................21 Local Interest in Deciding Controversy...............................22 Parties' Preferences......................................................23 Whether the Claims Arose Elsewhere.................................25 Convenience of the Parties as Indicated By Their Relative Physical and Financial Condition......................................26 Witness Factors...........................................................27 The Location of Records and Documents.............................28

Conclusion...........................................................................................29

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TABLE OF AUTHORITIES Cases 800-Flowers, Inc vs. Int'l Florist, Inc., 860 F. Supp. 128 (S.D.N.Y. 1994) ..................................................................................................................... 27 Affymetrix, Inc. v. Syntenti, Inc., 28 F. Supp. 2d 192 (D. Del. 1998) ............................... 23 Amana Refrigeration, Inc. v. Quadlux, Inc., 172 F.3d 852 (Fed. Cir. 1999) .............................................................................................................. 18 APV N. Am., Inc. v. Sig Simonazzi N. Am., Inc., 295 F. Supp. 2d 393 (D. Del. 2002) ................................................................................................ 22 Arachnid, Inc. v. Merit Indus., Inc., 939 F.2d 1574 (Fed. Cir. 1991)..................... 4, 16, 17 Asten, Inc. v. Weavexx Corp., No. 99-593 GMS, 2000 WL 1728354, Sleet, J. (D. Del. Feb. 11, 2000)............................................................ 15 Ballard Med. Prods. v. Concord Labs., Inc., 700 F. Supp. 796 (D. Del. 1988) ....................................................................................................... 19, 21 Bell Tel. Labs., Inc. v. I.B.M. Corp., 630 F. Supp. 373 (D. Del. 1984) ..................................................................................................................... 24 Brinn v. McCracken Financial Services, Inc., No. 95-542-SLR, 1996 WL 79377, Robinson, J. (D. Del. Feb. 20, 1996) ........................................ 23 Burstein v. Applied Extrusion Techs., Inc., 829 F. Supp. 106 (D. Del. 1992) ....................................................................................................... 25, 26 Cedars-Sinai Med. Ctr. v. Shalala, 125 F.3d 765 (9th Cir. 1997)................................ 3, 14 Chase Manhattan Bank, USA, N.A. v. Freedom Card, Inc., 265 F. Supp. 2d 445 (D. Del. 2003) ................................................................................. 22 Chrysler Capital Corp. v. Woehling, 663 F. Supp. 478 (D. Del. 1987) ............................................................................................................... 24, 25 Com21, Inc. v. Hybrid Patents Inc. (In re Com21, Inc.), 357 B.R. 802 (Bankr. N.D. Cal. 2006)............................................................... 15, 16, 18, 19 Cont'l Grain Co. v. Barge, 364 U.S 19 (1960)................................................................. 21 Corixa Corp. v. Idec Pharms. Corp., No. 01-615-GMS, 2002 WL 265094, Sleet, J. (D. Del. Feb. 25, 2002).............................................................. 21 Crosley Corp. v. Hazeltine Corp., 122 F.2d 925 (3d Cir. 1941)....................................... 14

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Crown Die & Tool Co. v. Nye Tool & Mach. Works, 261 U.S. 24 (1923).................................................................................................................... 16 Dippold-Harmon Enters., Inc. v. Lowes Co. Inc., No. 01-532GMS, 2001 WL 1414868, Sleet, J. (D. Del. Nov. 13, 2001)................................ 23 E.I. Dupont de Nemours & Co. v. Rhodia Fiber and Resin Intermediaries, S.A.S., 197 F.R.D. 112 (D. Del. 2000) ........................................ 23 E.I. Dupont de Numours & Co. v. Diamond Shamrock Corp., 522 F. Supp. 588 (D. Del. 1981)............................................................................ 15, 25 EEOC v. Univ. of Pa., 850 F.2d 969 (3d Cir. 1988) ..................................................... 3, 14 Elecs. Imaging, Inc. v. Coyle, 394 F.3d 1341 (Fed. Cir. 2005) .................................... 3, 14 First City Nat'l Bank and Trust Co. v. Simmons, 878 F.2d 76 (2d Cir. 1989) .......................................................................................................... 3, 14 In re Yamaha Motor Co., No. 518, 1997 WL 575861, Lourie, J. (Fed. Cir. Aug. 27, 1997)...................................................................................... 18 Intellectual Prop. Dev. v. TCI Cablevision of Cal., Inc., 248 F.3d 1333 (Fed. Cir. 2001)............................................................................................ 16 Juarma v. State Farm Ins. Co., 55 F.3d 873 (3d Cir. 1995) ......................... 5, 6, 19, 20, 21 Kahn v. Gen. Motors Corp., 889 F.2d 1078 (Fed. Cir. 1989)..................................... 14, 15 Kerotest Mfg. Co. v. C-O-Two Fire Equip. Co., 342 U.S. 180 (1952).................................................................................................................... 15 Manuel v. Convergys Corp., 430 F.3d 1132 (11th Cir. 2005) .......................................... 14 Omnicom Group, Inc. v. Employers Reinsurance Corp., No. 01839-GMS, 2002 WL 109346, Sleet, J. (D. Del. Jan. 28, 2002) ............................................................................................................... 23, 28 Pall Corp. v. Bentley Labs., Inc., 523 F. Supp. 450 (D. Del. 1981) ........................... 22, 25 Peregrine Corp. v. Peregrine Indus., Inc., 769 F. Supp. 169 (E.D. Pa. 1991) ............................................................................................................... 15 Piper Aircraft Co. v. Reyno, 454 U.S. 235 (1981)............................................................ 24 Schering Corp. v. Amgen, Inc., 969 F. Supp. 258 (D. Del. 1997) .............................. 15, 24 Shutte v. Armco Steel Corp., 431 F.2d 22 (3d Cir. 1970) ........................................... 23, 24

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Super Sack Mfg. Corp. v. Chase Packaging Corp., 57 F.3d 1054 (Fed. Cir. 1995)................................................................................................. 5, 18 TCW/Camil Holding, L.L.C. v. Fox Haron & Camerini, LLP, No. 03-1154-SLR, 2004 WL 1043193, Robinson, J. (D. Del. Apr. 30, 2004) ................................................................................................. 24, 25 Trippe Mfg. Co. v. Am. Power Conversion Corp., 46 F.3d 624 (7th Cir. 1995) .......................................................................................................... 3, 14 Tsoukanelis v. Country Pure Foods, Inc., 337 F. Supp. 2d 600 (D. Del. 2004) ......................................................................................................... 6, 21 Tuff-Torq Corp. v. Hydro-Gear Ltd. P'shp, 882 F. Supp. 359 (D. Del. 1994) ............................................................................................................. 23 Van Dusen v. Barrack, 376 U.S. 612 (1964) .................................................................... 25 VE Holding Corp. v. Johnson Gas Appliance Co., 917 F.2d 1574 (Fed. Cir. 1990)................................................................................................. 6, 20

Other Authorites 28 U.S.C. § 1338(a) ...................................................................................................... 6, 19 28 U.S.C. § 1391(c) ...................................................................................................... 6, 20 28 U.S.C. § 1400(b) .......................................................................................................... 20 28 U.S.C. § 1404(a) .............................................................................. 5, 13, 19, 20, 21, 29

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NATURE AND STAGE OF THE PROCEEDING On January 25, 2007, Every Penny Counts, Inc. ("EPC") filed the action styled Every Penny Counts, Inc. v. Bank of America Corporation and Visa USA, Inc., Case No. 2:07-CV-00042-JES (sometimes referred to interchangeably as "the Florida suit" and "EPC's Complaint") in the Middle District of Florida. (Ex. 1, EPC's Compl.) 1 In this Complaint, EPC asserted causes of action against Bank of America Corporation ("BAC") and Visa USA, Inc. ("Visa") for knowing and willful infringement of Unites States Patent No. 6,112,191 ("the '191 patent"). EPC's Complaint sets forth that the Keep the Change program ("KTC") infringes on the '191 patent. On March 21, 2007, EPC filed its First Amended Complaint and added Bank of America, N.A. ("BANA") as a defendant in the Florida suit. (Ex. 2, EPC's First Am. Compl.) As described more fully below, several substantive pleadings have been filed by EPC, BAC, BANA and Visa in the Florida suit. On April 25, 2007, Magistrate Judge Sheri Polster Chappell issued a Case Management and Scheduling Order setting an aggressive pace for litigation of that case. (Ex. 3, Case Mgmt. and Scheduling Order.) The Order sets a discovery deadline of December 31, 2007; requires the submission of dispositive Daubert, and Markman motions on or before January 31, 2008; sets a mediation deadline of April 1, 2008; and schedules the trial term (the estimated length is 5 days) to begin on June 2, 2008, less than 13 months from EPC's filing of the present pleading. (Id.) On March 20, 2007, BANA - in an apparent response to EPC's Complaint - filed the instant action in this Court seeking a declaratory judgment of non-infringement and
1

All exhibits to EPC's Opening Brief are contained in the Compendium of Exhibits, filed in conjunction herewith.

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invalidity regarding the '191 patent. BANA also seeks a declaration of ownership related to the '191 patent and alleges that SIP Assets, LLC ("SIP"), the other defendant in this action, has an ownership interest in the '191 patent. On April 11, 2007 BANA filed an amended complaint seeking identical declaratory relief and setting forth minimal additional factual information. SIP filed an answer to BANA's complaint on April 26, 2007. (D.I. 11.)

Throughout SIP's answer it repeatedly denies having an interest in the subject matter of this litigation, stating that "SIP does not currently have any license or ownership rights to the '191 patent and SIP does not intend to assert any claims against plaintiff regarding the '191 patent." (Id. ¶¶ 4, 9, 13, 15, 18, 22, and Affirmative Defense B.) On May 4, 2007, SIP verified the statements set forth in its answer through an affidavit and filed a motion to dismiss for lack of subject matter jurisdiction. (D.I. 12, Verification & D.I. 14, SIP's Mot. to Dismiss.) The affidavit verifying SIP's answer binds SIP to the statements quoted above, and the motion to dismiss echoes this point, stating that : SIP never had any ownership in the '191 patent, it has never threatened to sue BOA for infringement of the '191 patent, and it has expressly disclaimed any current licensing or ownership rights to the '191 patent and any intention to bring suit against BOA in connection with the '191 patent. (D.I. 14, SIP's Mot. to Dismiss 4.) Since SIP's verified answer and motion to dismiss resolve the issues of SIP's ownership of and ability to assert claims regarding the '191 patent, the outstanding issues in the instant suit ­ validity and infringement of the '191 patent ­ mirror the issues rapidly progressing toward resolution in the Florida litigation.

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SUMMARY OF ARGUMENT Defendant, Every Penny Counts, Inc. ("EPC"), respectfully asserts that the Plaintiff, Bank of America, N.A. ("BANA"), filed this action in response to EPC's previously filed suit for patent infringement, which is currently pending in the Middle District of Florida -- EPC's home forum -- and that BANA's filing of this suit constitutes a ham-handed attempt by an multi-national corporation to deprive the true party in interest and a struggling enterprise, EPC, of its chosen forum and should be treated as such with dismissal, transfer or stay. 1. EPC filed its complaint for infringement of the '191 patent nearly two

months in advance of BANA's filing of this suit. BANA's second-filed action for declaratory judgment involves the same primary parties, EPC and BANA, and an identical subset of the issues progressing toward resolution in the Florida suit, namely, the validity and infringement of the '191 patent. This overlap of parties and issues between the two suits triggers the application of the first-filed rule which, absent exceptional circumstances, strongly favors resolution of these common issues by the firstfiled court, the United States District Court for the Middle District of Florida. EEOC v. Univ. of Pa., 850 F.2d 969, 971 (3d Cir. 1988); Elecs. Imaging, Inc. v. Coyle, 394 F.3d 1341, 1348 (Fed. Cir. 2005). This preference for the first-filed forum vests this Court with discretion to dismiss, stay or transfer the instant suit. Cedars-Sinai Med. Ctr. v. Shalala, 125 F.3d 765, 769 (9th Cir. 1997); see also First City Nat'l Bank and Trust Co. v. Simmons, 878 F.2d 76 (2d Cir. 1989); Trippe Mfg. Co. v. Am. Power Conversion Corp., 46 F.3d 624 (7th Cir. 1995). EPC argues that dismissal is warranted as no exceptional circumstances justify departure from the first-filed rule.

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2.

The presence of SIP in this suit does not affect the first-filed rule's

application as no actual controversy exists between BANA and SIP because SIP cannot assert any claims against BANA on the '191 patent and has no stake in the ownership of that patent. SIP's pleadings to date clearly establish this lack of ownership. In its answer, SIP makes clear that it "does not currently and never has held ownership of any kind in the '191 patent." (D.I. 11, SIP's Answer ¶ 9.) SIP verified this statement by affidavit and conclusively stated in its motion to dismiss that "SIP never owned the '191 patent." (D.I. 14, SIP's Mot. to Dismiss 8.) These declarations indicate that SIP cannot assert claims against BANA on the '191 patent. A party "seeking to recover money damages for infringement . . . must have held the legal title to the patent during the time of the infringement." Arachnid, Inc. v. Merit Indus., Inc., 939 F.2d 1574, 1579 (Fed. Cir. 1991) (emphasis in original). While SIP did enjoy exclusive licensee rights to the '191

patent at one point in time, that license terminated prior to the launch of the KTC program, the infringement at issue. In its answer, SIP confirms that "[o]n June 8, 2005, SIP received a written notice from EPC indicating that the License Agreement was terminated, and as a result, SIP claims no current license rights with respect to the '191 patent." (D.I. 11, SIP's Answer ¶ 9.) The KTC program did not launch until in or around October 2005. (See Ex. 4, Press Release Introducing the KTC Program.) Thus, any and all rights SIP enjoyed in the '191 patent terminated prior to the beginning of the KTC program. Because SIP has held no rights at all in the '191 patent "during the time of the infringement," SIP is not entitled to sue for any damages for infringement of the '191 patent by the KTC program. SIP admits as much in its motion to dismiss. (D.I. 14, SIP's Mot. to Dismiss 4.) Accordingly, there is no actual controversy and BANA cannot have

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any objectively reasonable apprehension of SIP's bringing an infringement suit when SIP has no right to bring such a suit. 3. The declarations in SIPS's answer bar it from asserting any claims against

BANA for infringement of the '191 patent. SIP has stated that it "does not intend to assert any claims against plaintiff regarding the '191 patent." (D.I. 11, SIP's Answer ¶¶ 4, 13, 15, 18.) SIP verified this statement via affidavit and again confirmed in its motion to dismiss that it has no "intention to bring suit against BOA in connection with the '191 patent." (D.I. 14, SIP's Mot. to Dismiss 4 & D.I. 12, Verification.) These sworn statements eliminate any actual controversy between BANA and SIP. See Super Sack Mfg. Corp. v. Chase Packaging Corp., 57 F.3d 1054, 1058 (Fed. Cir. 1995) (holding that a patentee defending against an action for declaratory judgment can divest the trial court of jurisdiction over the case by filing as a statement of counsel in its motion papers and briefs a promise not to assert the patent at issue against the putative infringer). Thus, as SIP is not a proper party to this action, the first-filed rule vests this Court with discretion to dismiss, transfer or stay the instant action. 4. Alternatively, EPC argues that this Court should transfer this suit to the

Middle District of Florida pursuant to 28 U.S.C. § 1404(a). Section 1404(a) provides that "for the convenience of the parties and witnesses, in the interest of justice, a district court may transfer any civil action to any other district or division where it might have been brought." 28 U.S.C. § 1404(a); see also Juarma v. State Farm Ins. Co., 55 F.3d 873, 879 (3d Cir. 1995). When it is determined that an action could have been brought within a district, the Third Circuit directs courts to consider several factors in determining whether

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transfer is appropriate. 2 EPC argues that this suit could have been brought in the Middle District of Florida and that these factors favor transfer. 5. This action could have been brought in the Middle District of Florida. The

District Court for the Middle District of Florida has federal question jurisdiction over the issues raised in this suit, as it does over the identical issues presented in the first-filed suit currently pending before it, pursuant to 28 U.S.C. § 1338(a). EPC maintains its principal place of business in Cape Coral, Florida and the Florida court can therefore properly exercise personal jurisdiction over EPC. (See Ex. 5, EPC Aff. ¶ 4.). The propriety of the Florida court's exertion of personal jurisdiction over EPC also makes venue proper there pursuant to 28 U.S.C. § 1391(c) since EPC is a corporate entity. 28 U.S.C. § 1391(c); VE Holding Corp. v. Johnson Gas Appliance Co., 917 F.2d 1574, 1584 (Fed. Cir. 1990). 6. EPC argues that several of the factors identified in Juarma indicate that

transfer to the Middle District of Florida is appropriate, namely (i) the interests of justice and practical considerations related to the expeditiousness of trial; (ii) the local interest of Florida in deciding this controversy; (iii) EPC's choice of its home forum for the litigation of the common issues involved in these actions; (iv) Florida's significant connection to acts giving rise to EPC's claims; (v) the convenience of EPC and BANA as
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In Juarma the court provided a list of the relevant factors. Private interests include: (1) the plaintiffs' forum preference as manifested by the plaintiffs' original forum choice; (2) the defendant's forum preference; (3) whether the claim arose elsewhere; (4) the convenience of the parties as indicated by their relative physical and financial condition; (5) the convenience of the witnesses-but only to the extent that the witnesses may actually be unavailable for trial in one of the fora; and (6) the location of the books and records. Public interests include: (1) the enforceability of the judgment; (2) practical considerations that could make the trial easy, expeditious, or inexpensive; (3) the relative administrative difficulty in the two fora resulting from court congestion; (4) the local interest in deciding local controversies at home; and (5) the familiarity of the trial judge with the applicable state law in diversity cases. Tsoukanelis v. Country Pure Foods, Inc., 337 F. Supp. 2d 600, 603 (D. Del. 2004) (citing Juarma, 55 F.3d at 879).

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indicated by their relative financial conditions; and (vi) the location of documents and witnesses. EPC argues more fully below that the facts and circumstances surrounding this case, including the existence of the on-going, first-filed litigation in Florida, the vast resources of BANA as compared to those of EPC, the significant factual connections to Florida and the fact that EPC chose its home turf as the forum for litigating the issues presented in BANA's complaint, indicate that these factors favor transfer to the Middle District of Florida pursuant to § 1404, should the Court decline to dismiss under the firstfiled rule.

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STATEMENT OF FACTS BANA and its holding corporation, Bank of America Corporation ("BAC"), operate one of the largest banking enterprises in the world. FDIC reports rank BANA as the top commercial bank in terms of domestic deposits, $563,906,844,000.00 as of June 30, 2006. (Ex. 6, FDIC Report: Top 50 Domestic Banks and Savings Institutions by Total Domestic Deposits.) The FDIC's most recent financial report on BANA indicates that, as of December 31, 2006, BANA's total assets equaled $1,196,123,794,000.00; that its equity capital equaled $109,526,404,000.00; that it earned a net income of $15,225,166,000.00; and that BANA operated 5,836 domestic offices and 225 foreign offices at the close of 2006. (Ex. 7, FDIC Financial Report on BANA.). Similarly, FDIC reports rank BAC as the top bank holding company in terms of its domestic deposits, which, as of June 30, 2006, totaled $590,619,659,000.00. (Ex. 8, FDIC Report: Top 50 Bank Holding Companies by Total Domestic Deposits.) The most recent FDIC financial report on BAC indicates that, as of December 31, 2006, BAC's total assets equaled $1,376,138,773,000.00; its equity capital equaled $153,699,619,000.00; and that it has 5 subsidiary banks, the largest of which by far is BANA. (Ex. 9, FDIC Financial Report on BAC.) BAC issued a press release on January 23, 2007 indicating that its "2006 net income rose 28 percent to $21.13 billion from $16.47 billion a year earlier." (Ex. 10, BAC Press Release of Jan. 23, 2007.) Despite their formal status as two different entities, an integral relationship exists between BAC and BANA's operations. BAC's 2006 Annual Report does not make any distinction between the two: Bank of America Corporation (NYSE: BAC) is a publicly traded company headquartered in Charlotte, NC, that operates throughout the United States and 44 foreign

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countries. The corporation provides a diversified range of banking and nonbanking financial services and products domestically and internationally. (Ex. 11, Excerpt from BAC 2006 Annual Report 2.) Further, BAC and BANA share a common president, Kenneth D. Louis. (Ex. 12 & 13, Business Information Reports for BAC and BANA.) Finally, and most importantly, BAC advertises the infringing system ­ the KTC program ­ on its website despite previous claims that BANA owns and operates this program. (See Ex. 14, http://www.bankofamerica.com/promos/jump/ktc3 (last visited May 1, 2007) (indicating © 2007 Bank of America Corporation) & Ex. 15, BAC/BANA's Mot. to Dismiss 7.) In stark contrast to BAC and BANA, EPC confines its operations to Cape Coral, Florida and has limited resources at its disposal. EPC's operates due to the efforts of fewer than ten employees. EPC's 2006 Financial Statement indicates that as of

December 31, 2006, EPC total assets, along with its total stockholders' equity and liabilities, equaled $217,868. (Ex. 16, EPC 2006 Financial Statement.) EPC's net income for 2006 totaled $31,055, a far cry from the record setting $21.13 billion BAC reported for the same year. (Id. & Ex. 10, BAC Press Release of Jan. 23, 2007.) Despite this mismatch of resources, EPC elected to pursue its claims against BAC and BANA and to attempt to enforce its rights in the '191 patent. On January 25, 2007, EPC filed its Complaint in the Middle District of Florida. In this Complaint, EPC asserted causes of action against BAC and Visa USA, Inc. ("Visa") for knowing and willful infringement of the '191 patent. EPC's Complaint sets forth that the KTC program infringes on the '191 patent. EPC's chosen forum, unlike the District of Delaware, is intimately connected with the subject matter of EPC's Complaint and of the instant action. EPC, despite being

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incorporated under Delaware law, maintains its principal place of business within the Middle District of Florida, in Cape Coral, Florida. (Ex. 5, EPC Aff ¶ 4.) EPC's

President and the inventor of the '191 patent, Bertram Burke, also resides in Cape Coral, Florida. (Id.) EPC also participated in many meetings with Brian Sloan, a BANA V.P., in and around Cape Coral, Florida regarding EPC's proposal to license the '191 patent to BANA. (Ex. 5, EPC Aff. ¶¶ 5,6.) BAC and BANA also have significant connections to Florida. BAC maintains a registered agent in Florida and is registered to do business there. (Ex. 17, BAC Florida Corporate Registration.) BAC and BANA also operate at least 679 offices in Florida and hold the largest market share of any bank in Florida in terms of deposits. (Ex. 18, FDIC Summary of BANA Offices & Ex. 19, FDIC Deposit Market Share Report, Florida.) In contrast, BAC and BANA have no significant

connections to Delaware, aside from being incorporated under the laws of the state. BAC and BANA maintain only 2 branches in the state and do not even rank in the FDIC's Deposit Market Share Report for the state of Delware. (Ex. 18, FDIC Summary of BANA Offices & Ex. 20, FDIC Deposit Market Share Report, Delaware.) Despite this attenuated connection to Delaware, nearly two months after EPC filed its Complaint, BANA - in an apparent response to EPC's Complaint - filed the instant action in this Court seeking a declaratory judgment of non-infringement and invalidity regarding the '191 patent. BANA also seeks a declaration of ownership related to the '191 patent and alleges that SIP, the other defendant in this action, has an ownership interest in the '191 patent. Aside from the inclusion of SIP, this subsequently filed suit involves issues identical to those presented in EPC's Complaint and pending before the Florida court.

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As the Court knows, SIP filed an answer to BANA's complaint on April 26, 2007. (D.I. 11, SIP's Answer.) Throughout SIP's answer it repeatedly states that "SIP does not currently have any license or ownership rights to the '191 patent and SIP does not intend to assert any claims against plaintiff regarding the '191 patent." (Id. ¶ 4, see also ¶¶ 9, 13, 15, 18, 22, and Affirmative Defense B.) SIP states that its total lack of rights in the '191 patent and lack of its intent or ability to assert any claims against BANA related to the '191 patent eliminate any actual controversy between SIP and BANA, an assertion with which EPC fully agrees. On May 4, 2007, SIP verified the statements in its answer ­ swearing to the Court that its above quoted statement is "true and correct" -- with an affidavit attached to the motion to dismiss filed on that date. (D.I. 12, Verification & D.I. 14, SIP's Mot. to Dismiss.) Throughout the motion to dismiss, SIP frequently disavows ownership of the '191 patent and any ability to assert a claim against BANA related to that patent. (D.I. 14, SIP's Mot. to Dismiss 1, 3, 4, 6-8.) Since SIP's pleadings to date resolve the issues of SIP's ownership and ability to assert claims regarding the '191 patent, the outstanding issues in the instant suit ­ validity and infringement of the '191 patent ­ mirror the issues presented in the rapidly progressing Florida suit. On March 21, 2007, EPC filed its First Amended Complaint with the Middle District of Florida naming BANA as a defendant in the Florida suit. (Ex. 2, EPC's First Am. Compl.) On April 5, 2007, BAC filed an answer in the Middle District of Florida asserting non-infringement and invalidity related to the '191 patent as affirmative defenses. On that same day, Visa filed a motion to dismiss. On April 6, 2007, BAC and BANA also filed a motion to dismiss. (Ex. 15, BAC/BANA's Mot. to Dismiss.) EPC filed its opposition to the BAC/BANA motion on April 20, 2007 and the Florida court

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denied BAC/BANA's motion for leave to reply to this opposition on May 2, 2007. The BAC/BANA motion remains pending before Judge John E. Steele and Magistrate Judge Sheri Polster Chappell of the Middle District of Florida. On April 23, 2007, Judge Steele entered an order dismissing all claims as to Defendant Visa only, pursuant to EPC's Notice of Voluntary Dismissal. On April 25, 2007, Magistrate Judge Sheri Polster Chappell issued a Case Management and Scheduling Order setting an aggressive pace for the litigation of the issues raised in EPC's Complaint, and the subset of those issues subsequently brought before this Court in BANA's action. (Ex. 3, Case Mgmt. and Scheduling Order.) The Order sets a discovery deadline of December 31, 2007; requires the submission of dispositive Daubert, and Markman motions on or before January 31, 2008; sets a mediation deadline of April 1, 2008; and schedules the trial term (the estimated length is 5 days) to begin on June 2, 2008, less than 13 months from EPC's filing of the present pleading. (Id.) The Order also required the submission of initial disclosures by April 30, 2007, a deadline with which BAC, BANA, and EPC all complied. The schedule set forth in this Order, and the parties' compliance therewith, will ensure an efficient resolution to the issues of infringement and validity of the '191 raised in the Florida suit and this subsequently filed action.

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ARGUMENT BANA's Complaint for declaratory judgment constitutes a transparent effort to divest the Middle District of Florida, EPC's chosen forum, of jurisdiction over this controversy. BANA's Complaint involves identical issues to those pending before the Florida court including the validity and infringement of the '191 patent. The fact that this subsequently filed litigation involves these common issues and the same primary parties - EPC and BANA -- indicates that the first-filed rule warrants dismissal of this action. BANA's inclusion of SIP in this suit -- a tactic with no apparent purpose other than attempting to affect the venue determination -- does not change the appropriateness of dismissal. As established in SIP's pleadings to date and discussed more fully below, SIP has no ownership interest of any kind in the '191 patent, and, more importantly, SIP cannot and will not assert a claim for damages for infringement of the '191 patent by the KTC program. Therefore, the first-filed rule indicates that the ability to resolve this issue properly belongs to the District Court for the Middle District of Florida. Further, should the Court decline to dismiss this suit, 28 U.S.C. § 1404(a) supports a transfer of this action to the Middle District of Florida. EPC maintains its principal place of business in Cape Coral, Florida, and, its operator and the inventor of the patent at issue, Bertram Burke, reside there as well. (Ex. 5, EPC Aff. ¶ 4.) The fact that EPC chose to bring the first-filed suit in its home forum weighs in favor of transfer, given the deference for the plaintiff's choice of forum and the greater extent of this deference when a plaintiff chooses its home district as the forum for litigation. The location, size and relative means of the parties also favor transfer. Other key witnesses and evidence are also located in the Middle District of Florida; the same cannot be said for Delaware. These facts indicate the appropriateness of transfer of this suit.

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Finally, the first-filed rule also vests the Court with the authority to stay the instant suit until the Florida court issues a final judgment. Should the Court see fit to grant neither dismissal or transfer, EPC requests that the Court stay this action until such time. I. THIS ACTION SHOULD BE DISMISSED PURSUANT TO RULE 12(B)(3). The first-filed rule essentially states that "in all cases of federal concurrent jurisdiction, the court which first has possession of the subject must decide it." EEOC, 850 F.2d at 971 (quoting Crosley Corp. v. Hazeltine Corp., 122 F.2d 925, 929 (3d Cir. 1941); see also Manuel v. Convergys Corp., 430 F.3d 1132, 1135 (11th Cir. 2005) ("Where two actions involving overlapping issues and parties are pending in two federal courts, there is a strong presumption across the federal circuits that favors the forum of the first-filed suit under the first-filed rule"). Where such an overlap of issues and parties exists between actions "filed in two different districts, the second district court has discretion to transfer, stay or dismiss the second case." Cedars-Sinai Med. Ctr., 125 F.3d at 769; see also First City Nat'l Bank, 878 F.2d 76 (holding that district court properly dismissed suit pursuant to discretion afforded by the first-filed rule); Trippe Mfg. Co., 46 F.3d 624. The law of both the Third and Federal Circuit Courts of Appeal view

application of the first-filed rule as "the norm, not the exception" and both Courts hold that only "exceptional circumstances" allow a district court to "depart from the first-filed rule." EEOC, 122 F.2d at 979; Elecs. Imaging, Inc., 394 F.3d at 1348 ("Our precedent, however, favors the first to file rule in the absence of circumstances making it unjust or inefficient to permit a first-filed action to proceed to judgment"); Kahn v. Gen. Motors Corp., 889 F.2d 1078, 1081 (Fed. Cir. 1989) (stating that "restraint of the first-filed suit is

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made only to prevent wrong or injustice"). Thus, the Court may dismiss this suit upon a finding that the first-filed rule applies absent exceptional circumstances. EPC's filing of the Florida suit on January 25, 2007 clearly precedes BANA's filing of this suit on March 20, 2007. The fact that EPC did not add BANA to the Florida suit until March 21, 2007 does not affect this determination. See Kerotest Mfg. Co. v. CO-Two Fire Equip. Co., 342 U.S. 180, 182-84 (1952) (upholding stay of second-filed action even though plaintiff in second suit was not joined as defendant in first-filed action until after second suit was initiated); Schering Corp. v. Amgen, Inc., 969 F. Supp. 258, 267 (D. Del. 1997) (holding that licensee's patent infringement was first-filed even if it lacked standing until it amended the complaint to add the patent holder as a plaintiff after the defendant had filed a declaratory judgment action in another district); E.I. Dupont de Numours & Co. v. Diamond Shamrock Corp., 522 F. Supp. 588 (D. Del. 1981); Com21, Inc. v. Hybrid Patents Inc. (In re Com21, Inc.), 357 B.R. 802, 809 (Bankr. N.D. Cal. 2006) ("In making determination of which action is filed first, the court looks to the filing date of the original complaint") 3 . Thus, "the general requirement that the same parties as well as the same issues are involved in the two actions" remains the only issue for this Court to consider before finding the first-filed rule applicable. Kahn, 889 F.2d at 1081 (internal quotation marks and citations omitted). BANA admitted that this "action

concerns the same patent as [the Florida] action, and the alleged infringement of the
3

The fact that EPC was served with this action one day in advance of effecting service of the amended complaint on BANA is also irrelevant. See Asten, Inc. v. Weavexx Corp., No. 99-593 GMS, 2000 WL 1728354, WL Op. at *3, Sleet, J. (D. Del. Feb. 11, 2000) ("The only case from this circuit to squarely address the issue concluded that the firstfiled rule gives priority to an earlier filed complaint even if a later filed complaint is first served" (citing Peregrine Corp. v. Peregrine Indus., Inc., 769 F. Supp. 169, 171-72 (E.D. Pa. 1991))). (All unreported cases cited in EPC's Opening Brief are attached hereto in alphabetical order.)

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`Keep The Change' system is at issue in both actions." (Ex. 15, BAC/BANA's Mot. to Dismiss 12.) The existence of the required overlap of parties is equally apparent as both suits involve BANA and EPC. The presence of dissimilar third parties in either suit does not affect the first-filed rule's applicability. See Com21, Inc., 357 B.R. at 809 (stating that "strict identity is not needed, only substantial similarity . . . courts look to whether the primary parties in both actions are the same") (emphasis in original) (citations omitted). The first-filed rule therefore applies and warrants dismissal of this action. BANA's assertions regarding SIP's claim of ownership of the '191 patent do not affect the appropriateness of dismissal pursuant to the first-filed rule. SIP is not a proper party in this declaratory judgment action, as no actual controversy exists between BANA and SIP. A party "seeking to recover money damages for infringement . . . must have held the legal title to the patent during the time of the infringement." Arachnid, Inc. v. Merit Indus., Inc., 939 F.2d 1574, 1579 (Fed. Cir. 1991) (emphasis in original) (citing Crown Die & Tool Co. v. Nye Tool & Mach. Works, 261 U.S. 24 (1923)). In its Answer, SIP makes clear that it "does not currently and never has held ownership of any kind in the '191 patent." (D.I. 11, SIP's Answer ¶ 9.) SIP verified this statement to the Court in an affidavit filed in conjunction with its motion to dismiss on May 4, 2007. (D.I. 12, Verification & D.I. 14, SIP's Mot. to Dismiss.) Further, SIP repeatedly disavows

ownership of the '191 patent in it motion to dismiss and concludes its argument therein by stating that "SIP never owned the '191 patent." (D.I. 14, SIP's Mot. to Dismiss 8 (emphasis in original).) It is true that not just a patent owner, but also an exclusive licensee, may be entitled to damages for patent infringement injuries. Intellectual Prop. Dev. v. TCI Cablevision of Cal., Inc., 248 F.3d 1333, 1347 (Fed. Cir. 2001). Under

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Arachnid, however, an exclusive licensee's rights under the patent must be in effect during the time of the infringement to be entitled to seek damages for such infringement. See 939 F.2d at 1579. Here, even though SIP did at one time hold an exclusive license for a limited use under the '191 patent, that license terminated prior to the launch of the KTC program, the infringement at issue. In its Answer, SIP confirms that "[o]n June 8, 2005, SIP received a written notice from EPC indicating that the License Agreement was terminated, and as a result, SIP claims no current license rights with respect to the '191 patent." (D.I. 11, SIP's Answer ¶ 9.) The KTC program did not launch until in or around October 2005. (See Ex. 4, Press Release Introducing the KTC Program.) That is, any and all rights SIP enjoyed in the '191 patent terminated prior to the beginning of the KTC program. Because SIP has held no rights at all in the '191 patent "during the time of the infringement," SIP is not entitled to sue for any damages for infringement of the '191 patent by the KTC program. Accordingly, there is no actual controversy. BANA cannot have any objectively reasonable apprehension of SIP's bringing an infringement suit when SIP has no right to bring such a suit. Moreover, SIP has stated that it "does not intend to assert any claims against plaintiff regarding the '191 patent." (D.I. 11, SIP's Answer ¶¶ 4, 13, 15, 18.) Again, SIP swore to the Court that this statement is "true and correct" in its affidavit filed on May 4, 2007. (D.I. 12, Verification.) The motion to dismiss expresses with great frequency this same lack of intent to sue, stating that SIP "has expressly disclaimed any intention to bring suit against BOA in connection with the '191 patent." (D.I. 14, SIP's Mot. to Dismiss 1, 4, 7.) This sworn disclaimer eliminates any actual controversy between

BANA and SIP. See Super Sack Mfg. Corp, 57 F.3d at 1058 (holding that a patentee

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defending against an action for declaratory judgment can divest the trial court of jurisdiction over the case by filing as a statement of counsel in its motion papers and briefs a promise not to assert the patent at issue against the putative infringer); Amana Refrigeration, Inc. v. Quadlux, Inc., 172 F.3d 852, 855 (Fed. Cir. 1999) (holding that promise not to assert against the declaratory plaintiff any infringement claim under the patent with respect to any product previously or currently advertised, manufactured, or sold by the declaratory plaintiff removed any reasonable apprehension of suit); In re Yamaha Motor Co., No. 518, 1997 WL 575861, WL Op. at *3, Lourie, J. (Fed. Cir. Aug. 27, 1997) (finding that district court erred in denying motion to dismiss declaratory judgment claim where patentee agreed not to sue declaratory plaintiff for infringement). Thus, as there is no actual controversy between BANA and SIP, SIP is not a proper party to this action and the first-filed rule applies. Even if SIP were a proper party with a colorable claim, any assertions by BANA regarding the Florida Court's jurisdiction over SIP would not justify departure from the first-filed rule. 4 Indeed, the first-filed rule indicates that the resolution of such issues involving jurisdiction over third parties properly belongs within the discretion of the firstfiled court. Com21, Inc., 357 B.R. at 809 ("In light of the deference to be given to the first-filed case, whether [third parties] can and should be joined in the [first-filed] litigation are issues that, in the first instance, should be considered by the [first-filed] district court"). The ability to resolve this issue properly rests with the court in which the

BANA devoted significant effort to such an argument in its Motion to Dismiss, filed with the Middle District of Florida. (See Ex. 15, BAC/BANA's Mot. to Dismiss 8 ("As explained above, only the District Court of Delaware has jurisdiction over all parties in interest, including SIP, and thus only that Court can resolve the threshold issue of who has the right to assert and claim damages for the infringement of the '191 patent.").)

4

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first-filed action lodged and any assertion made by BANA regarding this issue does not warrant an exception to the first-filed rule. See Com21, Inc., 357 B.R. at 809. Thus, the first-filed rule vests this Court with discretion to dismiss the instant action. II. THIS ACTION SHOULD BE TRANSFERRED TO THE DISTRICT COURT FOR THE MIDDLE DISTRICT OF FLORIDA. "For the convenience of the parties and witnesses, in the interest of justice, a district court may transfer any civil action to any other district or division where it might have been brought." 28 U.S.C. § 1404(a); see also Juarma, 55 F.3d at 879. After determining whether an action could properly be brought in a transferee district, courts "consider all relevant factors to determine whether on balance the litigation would more conveniently proceed and the interests of justice be better served by transfer to a different forum." Juarma, 55 F.3d at 879 (quoting 15 Wright, Miller & Cooper § 3847); Ballard Med. Prods. v. Concord Labs., Inc., 700 F. Supp. 796, 800 (D. Del. 1988) (stating that "the issue becomes whether transfer is warranted after weighing the `convenience of the parties and witnesses' and the `interests of justice' to the venue selected"). Transfer is proper under both of these considerations. A. THIS ACTION COULD HAVE BEEN BROUGHT IN FLORIDA.

This action could have been brought in the Middle District of Florida. The District Court for the Middle District of Florida has federal question jurisdiction over the issues raised in this suit, as it does over the identical issues presented in the first-filed suit currently pending before it, pursuant to 28 U.S.C. § 1338(a). EPC maintains its principal place of business in Cape Coral, Florida, and the Florida court can therefore properly exercise personal jurisdiction over EPC. (See Ex. 5, EPC Aff. ¶ 4.). The propriety of the Florida court's exertion of personal jurisdiction over EPC also makes venue proper there

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pursuant to 28 U.S.C. § 1391(c) since EPC is a corporate entity. 28 U.S.C. § 1391(c); VE Holding Corp., 917 F.2d at 1584. Additionally, 28 U.S.C. § 1400(b) also supports venue in the Middle District of Florida since BANA committed acts of infringement there. 28 U.S.C. § 1400(b) . Further, as explained in Section I supra, SIP cannot claim any damages for infringement of the '191 patent by the KTC program, because any and all of SIP's rights in the '191 patent terminated prior to the launch of the KTC program and due to SIP's sworn statement to this Court expressing a lack of intent to bring such a claim against BANA. Thus, SIP is not a proper party to BANA's action for declaratory judgment as SIP never owned the '191 patent and cannot claim any damages for infringement by the KTC program. B. THE RELEVANT 1404(A) CONSIDERATIONS SUPPORT TRANSFER TO THE MIDDLE DISTRICT OF FLORIDA.

In determining whether to transfer a case under § 1404(a) "courts have not limited their consideration to the three enumerated factors in § 1404(a) (convenience of parties, convenience of witnesses, or interests of justice)." Juarma, 55 F.3d at 879. The Third Circuit recognizes that "there is no definitive formula or list of factors to consider." Id. However, in Juarma the court provided an illustrative list of the relevant factors: Private interests include: (1) the plaintiffs' forum preference as manifested by the plaintiffs' original forum choice; (2) the defendant's forum preference; (3) whether the claim arose elsewhere; (4) the convenience of the parties as indicated by their relative physical and financial condition; (5) the convenience of the witnesses-but only to the extent that the witnesses may actually be unavailable for trial in one of the fora; and (6) the location of the books and records. Public interests include: (1) the enforceability of the judgment; (2) practical considerations that could make the trial easy, expeditious, or inexpensive; (3) the relative administrative difficulty in the two fora resulting from court congestion; (4) the local interest in deciding

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local controversies at home; and (5) the familiarity of the trial judge with the applicable state law in diversity cases. Tsoukanelis, 337 F. Supp. 2d at 603 (citing Juarma, 55 F.3d at 879.) An examination of the relevant factors indicates that this action properly belongs in the Middle District of Florida. 1. Interests of Justice and Practical Considerations Related to the Expeditiousness of Trial.

It is well established that in order to "serve the ends of efficient litigation and justice, the court should litigate all issues arising relating to patents in one place." Ballard Med. Prods., 700 F. Supp. at 801. As discussed above, EPC filed the suit currently pending before the Middle District of Florida which involves identical issues to those presented in BANA's complaint nearly three months in advance of the commencement of this action. "Since both suits raise almost identical issues, permitting these two actions to proceed in separate districts would produce the waste of time, energy and money that § 1404(a) was designed to prevent." Id. (citing Cont'l Grain Co. v. Barge, 364 U.S 19, 26 (1960)). Given the need to avoid the waste of litigating the issues of infringement and validity of the '191 patent in two different courts and the strong presumption in favor of the first-filed forum, the interests of justice and efficiency warrant transfer to the Middle District of Florida. See Corixa Corp. v. Idec Pharms. Corp., No. 01-615-GMS, 2002 WL 265094, WL Op. at *1, *4, Sleet, J. (D. Del. Feb. 25, 2002) (stating that the "first-filed doctrine also serves to prevent a multiplicity of actions and to achieve resolution in a single lawsuit of all disputes arising from common matters" and noting that the first-filed rule addresses the same concerns as this Juarma factor); Chase Manhattan Bank, USA, N.A. v. Freedom Card, Inc., 265 F. Supp. 2d 445, 448 (D. Del. 2003); Pall Corp. v. Bentley Labs., Inc., 523 F. Supp. 450, 453 (D. Del. 1981).

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In addition to the first-filed rule indicating that efficiency favors transfer, the progress that the Florida court has made thus far and the schedule established by that court also merit a transfer for the sake of judicial expeditiousness. As established above, the Florida court has already received multiple substantive pleadings concerning the same issues present in this case. Further, whereas this Court has yet to issue a scheduling order, the Florida court has established a trial date of June 2, 2008 and mandated that discovery be completed by the end of this calendar year. (Ex. 3, Case Mgmt. and Scheduling Order.) In light of these developments in the Florida court and the lack of progress made thus far in this forum, the efficiency interests favor transfer. See APV N. Am., Inc. v. Sig Simonazzi N. Am., Inc., 295 F. Supp. 2d 393, 399 (D. Del. 2002). 2. Local Interest in Deciding the Controversy.

The Florida court's interest in deciding the outcome of this action weighs in favor of transfer. As discussed above, BAC/BANA holds the largest market share of any bank in Florida in terms of deposits. (Ex. 19, FDIC Deposit Market Share Report, Florida.) BAC/BANA also operates 679 branches in the state, causing Florida to rank second only to California in terms of the number of BAC/BANA branches in a single state. (Ex. 18, FDIC Summary of BANA Offices.) BAC is also registered to do business in Florida. These facts indicate that Florida has a significant interest in regulating the conduct of BAC and BANA, particularly when their conduct harms its residents. EPC maintains its principal place of business in Florida and its President and inventor of the '191 patent is a citizen of the state, thus, BAC and BANA's continued infringement of the '191 patent causes continued harm to a resident of Florida and Florida's interest in regulating such conduct is substantial. Further, since EPC met with a BANA representative, Brian Sloan,

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to discuss a potential license agreement between BANA and EPC regarding the '191 patent, events giving rise to EPC's willful infringement claim occurred in Florida. Clearly, the local interest of the Florida court in deciding this case weighs in favor of transfer. Omnicom Group, Inc. v. Employers Reinsurance Corp., No. 01-839-GMS, 2002 WL 109346, at *4 (Sleet, J.) (D. Del. Jan. 28, 2002). 3. Parties' Preferences. 5

The Third Circuit recognizes that "[i]t is black letter law that a plaintiff's choice of a proper forum is a paramount consideration in any determination of a transfer request, and that choice should not be disturbed lightly." Shutte v. Armco Steel Corp., 431 F.2d 22, 25 (3d Cir. 1970). The weight afforded to a plaintiff's choice of forum increases substantially "where, as here, plaintiff has brought suit on his `home turf.'" Brinn v. McCracken Financial Services, Inc., No. 95-542-SLR, 1996 WL 79377, WL Op. at *6, Robinson, J. (D. Del. Feb. 20, 1996) (quoting Tuff-Torq Corp. v. Hydro-Gear Ltd. P'shp, 882 F. Supp. 359, 363 (D. Del. 1994)); see also E.I. Dupont de Nemours & Co. v. Rhodia Fiber and Resin Intermediaries, S.A.S., 197 F.R.D. 112, 125 (D. Del. 2000) ("The plaintiff's choice of forum should rarely be disturbed and where the plaintiff brings suit in its home forum, that choice deserves an even higher degree of deference." (citing Piper Aircraft Co. v. Reyno, 454 U.S. 235, 255 (1981))). Under Delaware law, the fact that a corporate plaintiff incorporated itself in Delaware does not make the state its home turf, rather, this determination hinges on the location of the principal place of business. See
5

EPC recognizes that this court often declines to separately consider these factors in evaluating transfers. Affymetrix, Inc. v. Syntenti, Inc., 28 F. Supp. 2d 192 (D. Del. 1998); Dippold-Harmon Enters., Inc. v. Lowes Co. Inc., No. 01-532-GMS, 2001 WL 1414868, Sleet, J. (D. Del. Nov. 13, 2001); Omnicom, WL Op. at *2 n.4. However, EPC believes that its arguments under these factors strongly support transfer and illustrate the inequitable intent surrounding BANA's decision to file suit in this district.

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Chrysler Capital Corp. v. Woehling, 663 F. Supp. 478, 482 (D. Del. 1987) ("Chrysler is a Delaware corporation but that alone is not sufficient to make Delaware its home turf. Chrysler's principal place of business is Greenwich, Connecticut, and it was the Connecticut office that conducted all of the activities which are subject of this suit.") (citations omitted); TCW/Camil Holding, L.L.C. v. Fox Haron & Camerini, LLP, No. 031154-SLR, 2004 WL 1043193, WL Op. at *2, Robinson, J. (D. Del. Apr. 30, 2004) ("[T]he District of Delaware is not plaintiff's `home turf,' since it maintains its principal place of business in New York"). Thus, EPC's home turf is the Middle District of Florida, since it maintains its principal place of business there and BAC/BANA's home turf is in Charlotte, North Carolina, the location of its principal place of business. EPC acknowledges that, superficially, BANA appears to be the plaintiff and the party entitled to the aforementioned deference, however, Delaware courts recognize that the first-filed rule dictates that the plaintiff in the first-filed suit is actually the party whose forum choice is entitled to this deference. See Schering, 969 F. Supp. at 268 ("[The first-filing plaintiff] filed the original complaint; as the plaintiff, its choice of forum is `a paramount consideration' and `should not be lightly disturbed.'" (quoting Schutte, 431 F.2d at 25)); Bell Tel. Labs., Inc. v. I.B.M. Corp., 630 F. Supp. 373, 377 (D. Del. 1984) ("[The second-filing plaintiff] thus had ample opportunity to become aware of the [first-filed] action before it filed in Delaware but instead it brought a new action in a forum that has little, if any, connection with the subject matter of this litigation. Under these circumstances, the balance of equities favors awarding [the first-filing plaintiff], as the first to file, its choice of forum."). Thus, the fact that EPC first filed the suit raising the issues brought before this Court in BANA's action entitles EPC's choice of its home

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forum to the deference recognized by the Third Circuit and the Supreme Court. BANA's filing of this suit constitutes mere parlor games designed to deprive EPC of this choice and the deference associated therewith. The Supreme Court has made it clear that this tactic is unacceptable. Van Dusen v. Barrack, 376 U.S. 612, 624 (1964) ("The power to defeat a transfer to the convenient forum should derive from the rights and privileges conferred by federal law and not from the deliberate conduct of a party favoring trial in an inconvenient forum"). Thus, EPC's preference of its home forum weighs in favor of transfer. 6 4. Whether the Claims Arose Elsewhere.

None of the operative facts giving rise to the claims related to BANA's infringement of the '191 patent through the KTC program occurred in or near Delaware. In the BANA Motion to Dismiss, BANA admits that it administers the KTC program from Charlotte, North Carolina. (Ex. 15, BAC/BANA's Mot. to Dismiss 2, 3.) Where Delaware's connection to the acts giving rise to a lawsuit are this insubstantial, transfer is warranted. See Burstein v. Applied Extrusion Techs., Inc., 829 F. Supp. 106 (D. Del. 1992). On the other hand, several connections between BANA's infringement of the

To the extent that the Court does not acknowledge EPC as the party whose choice of forum is entitled to deference, EPC argues that any deference granted to BANA's choice of forum must be severely limited. First, as Chrysler, 663 F. Supp. at 482, and TCW/Camil Holding, 2004 WL 1043193, at *2, illustrate, Delaware is not BANA's `home turf' and, therefore, its choice to litigate in Delaware is entitled to less deference. Pall, 523 F. Supp. at 452. Second, the fact that BANA's action is the second-filed suit also lessens the deference the court should afford to its chosen forum. See E.I. Dupont, 522 F. Supp at 591-92 ("The plaintiff's choice of forum carries greater weight when it will not result in duplicative litigation than it does here, where the [first-filed court] will hear testimony concerning the validity and infringement of the very patents here in suit. Dupont filed this action after Hooker filed its complaint in New York, and after Diamond initiated proceedings in Oklahoma. It plainly chose its own convenience in preference to entering into two lawsuits already pending in federal court").

6

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'191 patent and Florida exist. As established above, EPC maintains its principal place of business in Cape Coral, Florida. (Ex. 5, EPC Aff. ¶ 4.). EPC's President, Bertram Burke, resides in Cape Coral, Florida as well. (Id) This means that the damages for each act of infringement are felt in Florida. Additionally, many of EPC's meetings regarding

licensing of the '191 patent to BANA took place in and around Cape Coral, Florida with Brian Sloan, a BANA V.P. and EPC's corporate account manager. (Ex. 5, EPC Aff. ¶¶ 5, 6.) These meetings establish BANA's knowledge of the '191 patent and therefore relate to the issue of willful infringement of that patent. Finally, BANA operates over 600 branches in Florida, as opposed to two BANA branches located within Delaware. (Ex. 18, FDIC Summary of BANA Offices.) These facts demonstrate that the events related to BANA's infringement of the '191 patent hold a more significant connection to the Middle District of Florida than to Delaware and indicate the propriety of transfer. 5. Convenience of the Parties as Indicated By Their Relative Physical and Financial Condition.

The relative conditions of the parties favor transfer of this action to the Middle District of Florida, EPC's home and chosen forum for the first-filed suit. As established above, BANA does business throughout the country and world and enjoys the benefit of vast resources whereas EPC's operations are confined to Cape Coral, Florida and, largely as a result of BANA's actions, its resources are limited. BANA operates many branches in Florida and conducts regular business there. Given these facts and BANA's resources, it would experience little to no inconvenience as a result of transfer. Indeed, BANA has already engaged counsel to litigate the Florida suit and has filed numerous pleadings. In contrast, EPC would face great inconvenience in litigating in Delaware as it conducts none of its operations in Delaware and is engaged in prosecuting its infringement claims

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in Florida, its home and the forum it chose when it brought the first-filed suit. In this situation, the disparity of the means between these parties favors transfer. See 800Flowers, Inc vs. Int'l Florist, Inc., 860 F. Supp. 128, 135 (S.D.N.Y. 1994). 6. Witness Factors

At least two key EPC witnesses reside in Florida. Bertram Burke, the inventor of the '191 patent and operator of EPC, resides in Cape Coral, Florida. (Ex. 5, EPC Aff. ¶ 4.). Mr. Burke's testimony regarding (i) EPC's licensing efforts related to the '191 patent; (ii) BANA's knowledge of the '191 patent; and (iii) the harm suffered by EPC as a result of BANA's willful infringement of the '191 patent, constitutes key testimony. Further Brian Sloan maintains an office at 13099 U.S. Highway 41, Suite 400, Fort Myers, FL 33907 and was Mr. Burke's primary contact for presentations concerning a potential license agreement between EPC and BANA regarding the '191 patent. (See Ex. 5, EPC Aff. ¶¶ 5, 6.) The fact that these witnesses reside within the Middle District of Florida indicates that transfer is favored. This is particularly true since, thus far, BANA has failed to identify any witnesses located in Delaware. In BANA's Initial Disclosures filed in the Florida suit, it identifies only members of the Leo Stanger firm, the firm that assisted Mr. Burke in prosecuting the '191 patent, in New Jersey; various BANA employees which EPC believes to be located in or around Charlotte, North Carolina 7 ; and employees of SIP in New York as potential witnesses. (Ex. 22, BANA Initial

Disclosures 2-3.) In light of these facts, the location of witnesses supports transfer.

BANA's initial disclosures did not list locations for many of the individuals identified as potential witnesses, but rather, offered only the contact information of its counsel. EPC researched the location of these individuals and attaches a summary of what it believes in good faith to be an accurate reporting of these individuals' locations. (Ex. 21, Summary of Locations of BANA Witnesses Identified in Initial Disclosures.)

7

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Additionally, the fact that these witnesses will have to travel to Florida to testify in that litigation further indicates the appropriateness of transfer based on this factor, as forcing these parties to also testify in Delaware in this duplicative litigation certainly increases the burden on them. Omnicom Group, Inc, WL Op. at *3. 7. The Location of the Records and Documents.

The location of the records and documents further supports transfer to the Middle District of Florida. BANA's Initial Disclosures in the Florida suit indicate the docu