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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE TIME WARNER CABLE, INC. Plaintiff, vs. GPNE CORP. § § § § § § § § §

C. A. No. 1:07-cv-067 *** Jury Trial Demanded

Defendant.

GPNE'S BRIEF IN SUPPORT OF ITS MOTION TO DISMISS, STAY OR TRANSFER Defendant GPNE Corporation ("GPNE") moves the Court to Dismiss or Stay this action pursuant to the "first to file" rule, or in the alternative, to transfer it to the Eastern District of Texas, Marshall Division pursuant to 28 U.S.C. § 1404(a) (1993). I. INTRODUCTION

On January 31, 2007, GPNE filed a patent infringement case in the Eastern District of Texas against Time Warner Inc. ("Time Warner"), Comcast Cable Communications LLC ("Comcast"), and Charter Communications, Inc. ("Charter"), alleging infringement of United States Patent No. 6,282,406 ("the `406 patent") entitled "Paging Method and Apparatus" in a case captioned GPNE Corp. v. Time Warner Inc. et al. No. 6:07-cv-60 ("the Texas litigation".) (attached as Exhibit A). Two days later, on February 2, 2007, Time Warner Cable, Inc.

("TWC"), filed an action in this Court seeking a declaratory judgment of noninfringement and invalidity of the `406 patent.1 Time Warner, Inc. is an 84% owner of Time Warner Cable, Inc. Also, concurrently herewith GPNE has amended the complaint in the Eastern District of Texas to include Time Warner Cable, Inc. (attached as Exhibit B).
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Time Warner Cable, Inc. v. GPNE Corp., C.A. No. 07-cv-067-***.

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II.

STATEMENT OF FACTS

Texas case plaintiff GPNE is the owner of the `406 patent which is directed to a method for operating a data communication system for transmitting data. Time Warner Cable, like the other defendants in the Texas case, operates a data communication system over its cable network that is based on the Data Over Cable Service Interface Specification ("DOCSIS"). GPNE has alleged in the Texas litigation that Time Warner Cable infringes the `406 patent by operating such a system. For the reasons delineated below, this Court should dismiss or stay this action pursuant to the "first to file" rule, or in the alternative, to transfer it to the Eastern District of Texas, Marshall Division pursuant to 28 U.S.C. § 1404(a). III. ARGUMENT a. First-to-File Rule Applies Determining which action should have priority under the first-to-file rule "raises the issue of national uniformity in patent cases, and invokes the special obligation of the Federal Circuit to avoid creating opportunities for dispositive differences among the regional circuits." Genentech, Inc. v. Eli Lilly Co., 998 F.2d 931, 937 (Fed. Cir. 1993). Accordingly, this Court should apply Federal Circuit law to this issue. In patent cases, "the forum of the first-filed case is favored, unless considerations of judicial and litigant economy, and the just and effective disposition of disputes, require otherwise." Id. The second-filed action may proceed only if there is sound reason that would make it unjust or inefficient to continue the first-filed action. Id. at 938. Further, the rule favoring the right of the first litigant to choose the forum, absent countervailing interests of justice or convenience, is supported equally when there is a mere day between filing as it is when a year intervenes between the suits. Id.

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b. First-to-File Rule Does Not Require Identical Parties to Both Actions Although the first filed action was against Time Warner, Inc. and not against its subsidiary Time Warner Cable, Inc., the first-to-file rule is applicable regardless because there is no requirement that both actions include identical parties. A subsequent action that does not have identical parties can still substantially overlap on the substantive issues of the first-filed action, warranting dismissal or transfer. Good Sportsman Mktg. LLC v. Testa Assocs., LLC, 2005 U.S. Dist. LEXIS 29182, at *7­8 (E.D. Tex. Sept. 1, 2005) (citing Superior Sav. Ass'n v. Bank of Dallas, 705 F. Supp. 326, 328­29 (N.D. Tex. 1989)); see Save Power Ltd. v. Syntek Fin. Corp., 121 F.3d 947, 950 (5th Cir. 1997). Accordingly, the first-to-file rule does not require identical parties in both cases. Versus Tech., Inc. v. Hillenbrand Indus., 2004 U.S. Dist. LEXIS 28331, at *16 (W.D. Mich. Nov. 23, 2004) (citing Hartford Accident & Indem. Co. v. Margolis, 1992 U.S. App. LEXIS 4234, at *1 (9th Cir. Mar. 5, 1992) ("Absolute identity of parties in the two cases is not required."); Thomas & Betts Corp. v. Hayes, 222 F. Supp. 2d 994, 996 (W.D. Tenn. 2002) ("precise identity of the parties to both actions is not required"); EBW, Inc. v. Environ Prods., Inc., 1996 U.S. Dist. LEXIS 11922, at *9 (W.D. Mich. July 8, 1996) (stating that "a precise identity of parties is simply not required")). Therefore, the first-to-file rule applies to the present case involving Time Warner Cable. Additionally, GPNE has concurrently herewith amended the Complaint in the Eastern District of Texas to include Time Warner Cable, Inc. such that Time Warner Cable, Inc. is now a party to both this action and the Texas litigation. c. First-to-File Rule Requires Dismissal or a Stay of this Case Thus, the first-filed rule is as simple as its name suggests: "where two patent lawsuits involving the same claims are filed in different jurisdictions, the Federal Circuit requires that the first-filed action be given preference absent special circumstances." Sony Elecs., Inc. v. Orion IP, 3

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LLC, 2006 U.S. Dist. LEXIS 9834, at *2 (D. Del. Mar. 14, 2006) (quoting Corixa Corp. v. IDEC Pharm. Corp., 2002 U.S. Dist. LEXIS 2980, at *304 (D. Del. Feb. 25, 2002)). In the instant matter, there can be no dispute as to which action was filed first or that the core issues of the two cases substantially overlap, as they involve the same patent, similar parties, and the same technology. When a court is confronted with a declaratory judgment action, the inverse of which (i.e. an infringement action) was filed prior to the declaratory judgment action, the declaratory judgment action must be dismissed. Id. at *3 (stating "[T]he court is confronted with a

declaratory judgment action by SCA alone, the inverse of which (i.e. an infringement action) was filed about three months earlier in Texas. Therefore, pursuant to the first-filed rule, SCA must be dismissed from this case."). There are no special considerations in this case, as explained more explicitly below. A court has the "inherent power to conserve judicial resources by controlling its own docket." Zoetics, Inc. v. Yahoo!, Inc., 2006 U.S. Dist. LEXIS 46910, at *3 (D. Del. July 6, 2006) (quoting Cost Bros., Inc. v. Travelers Indem. Co., 760 F.2d 58, 60 (3rd Cir. 1985)). In ruling on a motion to stay, courts are guided by three factors: "(1) whether a stay would unduly prejudice or present a clear tactical disadvantage to the non-moving party; (2) whether a stay will simplify the issues in question and trial of the case; and (3) whether discovery is complete and whether a trial date has been set." Pegasus Dev. Corp. v. DirecTV, Inc., 2003 Dist. LEXIS 8052, at *3­4 (D. Del. May 14, 2003) (quoting Xerox Corp. v. 3Comm Corp., 69 F. Supp. 2d 404, 406 (W.D.N.Y. 1999)). These factors weigh in favor of the first-filing party, GPNE. Both litigations are in their early stages, and the presumption that the first-filed rule should apply has not been overcome.

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d. Transfer Under 28 U.S.C. § 1404(a) The statute governing transfers of venue, namely 28 U.S.C. § 1404(a), states: "For the convenience of 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." In patent cases, a district court applies the procedural law of the circuit in which it resides. See Storage Tech. Corp. v. Cisco Sys. Inc., 329 F.3d 823, 836 (Fed. Cir. 2003). The burden of showing the need for a transfer is on the movant. Jumara v. State Farm Ins. Co., 55 F.3d 873, 879 (3rd Cir. 1995). In considering a 1404(a) transfer, the Court must balance between several private and public interests. Zoetics, 2006 U.S. Dist. LEXIS 46910, at *7 (citing Reyno v. Piper Aircraft Co., 630 F.2d 149, 159 (3rd Cir. 1980)). The private interests to be considered are: the plaintiff's choice of forum, the defendant's preferred forum, whether the claim arose elsewhere, the convenience of the witnesses, but only so far as the witnesses might be unavailable for trial if the trial is conducted in a certain forum, and the location of books and records, to the extent that these books and records could not be produced in a certain forum. Jumara, 55 F.3d at 883. The only two relevant private factors, specifically the plaintiff's choice of forum and the defendant's preferred forum, when balanced, must come out in GPNE's favor. When ruling on a motion to transfer, this Court must "balance all of the relevant factors and respect that a plaintiff's choice of forum is entitled to substantial deference and should not be lightly disturbed." Zoetics, 2006 U.S. Dist. LEXIS 46910, at *8 (citing Stratos Lightwave, Inc. v. E20 Communications, Inc., 2002 U.S. Dist. LEXIS 5653, at *5 (D. Del Mar. 26, 2002)). This factor weighs heavily in favor of defendant GPNE in the Delaware case, as it is plaintiff in the firstfiled action.

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The public factors to be considered are: the enforceability of the judgment, practical considerations regarding the ease, speed, or expense of the trial, the administrative difficulty due to court congestion, the local interest in deciding local controversies in the home forum, the public policies of the two fora, and the trial judge's familiarity with the applicable state law in diversity cases. Id. Thus, the public interest aspects also weigh in the favor of transfer, as where related lawsuits exist, "it is in the interests of justice to permit suits involving the same parties and issues to proceed before one court." Cashedge, Inc. v. Yodlee, Inc., 2006 U.S. Dist. LEXIS 50488, at *7­8 (D. Del. July 19, 2006) (quoting Brunswick Corp. v. Precor Inc., 2000 U.S., Dist. LEXIS 22222, at *8 (D. Del. Dec. 12, 2000)). Several factors that support a decision to transfer are present in this case: namely whether the litigation involves: (1) the same parties, (2) related or similar technologies for the judge to become familiar with, and (3) a common field of prior art. Id. The judgment would be enforceable in both jurisdictions, there is not special administrative difficulty due to court congestion, the public policies of the two fora regarding patents do not differ, and this is not a diversity case requiring application of state laws. Moreover, since the Eastern District of Texas Complaint has concurrently herewith been amended to include Time Warner Cable, Inc. the parties to both actions are the same. Patent rights are not local or state matters and therefore cannot give rise to a local controversy, or implicate local public policy. Stratos Lightwave, Inc. v. E20 Communications, Inc., 2002 U.S. Dist. LEXIS 5653, at *8 (D. Del. Mar. 26, 2002). Accordingly, the relevant private and public factors discussed above support a decision to transfer this case to the Eastern District of Texas.

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IV.

CONCLUSION

For the reasons outlined above, this Court should stay or dismiss this case in favor of the first-filed patent infringement case in the Eastern District of Texas. Alternatively, this Court should transfer this case under 28 U.S.C. 1404(a) for resolution in the Eastern District.

/s/ Richard K. Herrmann Richard K. Herrmann #405 Morris James, LLP 500 Delaware Avenue, Suite 1500 Wilmington, DE 19801-1494 T: (302) 888-6800 [email protected] ATTORNEYS FOR GPNE CORP.

OF COUNSEL: Edward W. Goldstein [email protected] Corby R. Vowell [email protected] Goldstein, Faucett & Prebeg, LLP 1177 West Loop South, Suite 400 Houston, Texas 77027 (713) 877-1515 ­ Telephone (713) 877-1737 Facsimile

Dated: February 26, 2007

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EXHIBIT A

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EXHIBIT B

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EXHIBIT C

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LEXSEE 2000 U.S. DIST. LEXIS 22222,AT 7

Cited As of: Feb 26, 2007 BRUNSWICK CORPORATION, Plaintiff, v. PRECOR INCORPORATED., Defendant. C.A. No. 00-691-GMS UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE 2000 U.S. Dist. LEXIS 22222 December 12, 2000, Decided December 12, 2000, Filed DISPOSITION: granted. [*1] Precor's motion to transfer I. BACKGROUND A. The parties COUNSEL: For BRUNSWICK CORPORATION, plaintiff: Robert W. Whetzel, Richards, Layton & Finger, Wilmington, DE. For PRECOR INCORPORATED, defendant: Samuel David Brickley, II, Connolly, Bove, Lodge & Hutz, Wilmington, DE. JUDGES: Gregory M. Sleet, UNITED STATES DISTRICT JUDGE. OPINION BY: Gregory M. Sleet OPINION: MEMORANDUM AND ORDER On August 1, 2000, the plaintiff, Brunswick Corporation, and its division Life Fitness ("Life Fitness") brought this patent infringement action against Precor Incorporated ("Precor"). Life Fitness alleges that Precor is infringing its U.S. Patent No. 6,095,951 (" '951 patent") relating to exercise treadmills. Presently before this court is Precor's motion to transfer this case to the United States District Court for the Western District of Washington, pursuant to 28 U.S.C. § 1404(a). Because the court finds that a transfer would convenience the parties and the witnesses while serving the interests of justice, Precor's motion to transfer is granted. Life Fitness and Precor both design, manufacture, [*2] and sell exercise equipment and both directly compete with one another in the exercise fitness market. Although both parties are incorporated in Delaware, neither party maintains a physical presence (e.g., offices or facilities) in this state. Life Fitness has its principal place of business in Franklin Park, Illinois and Precor has its principal place of business in Bothell, Washington. B. Prior Litigation Between the Parties "Life Fitness and Precor are no strangers to each other, nor to patent litigation." D.I. 7, at 2. In 1994, Precor filed a patent infringement suit against Life Fitness in the United States District Court for the Western District of Washington ("1994 litigation"). At issue in the 1994 litigation were . U.S. Patent Nos 5,599,259, 5,752,897 and certain Claims of U.S. Patent No. 5,382,207 (respectively the " '259, '897, and '207 patents"). The '207 patent is the parent of the '951 patent currently at issue in the case before the court. In the 1994 litigation, Claims 1-36 of '207 patent were dismissed on summary judgment in February 1996 leaving only claims 37, 38, and 39 at issue. In early September 1999, Life Fitness voluntarily stipulated to the dismissal [*3] of the claims for infringement of the '259 and '897 patents as well as Claims 38-39 of the '207 patent. As a result of this stipulation, these claims were dismissed with prejudice in an order dated September 23, 1999. See Precor Inc. v. Life Fitness, No. C94-1586C

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(W.D. Wash. Sept. 23, 1999) (stipulation and order of dismissal). Thus, the only infringement claim remaining for trial related to Claim 37 of the '207 patent. In October 1999, Life Fitness lost at trial as to this one patent claim. The judgment from the 1994 litigation is currently on appeal to the Federal Circuit. II. DISCUSSION Pursuant to 28 U.S.C. § 1404(a), the court may transfer this action to "any other district where it might have been brought" when it appears that a change of venue would "convenience" the parties and the witnesses while serving the "interest of justice." 28 U.S.C. § 1404(a) (1993). The parties here agree that Life Fitness could have brought this action in the Western District of Washington. See 28 U.S.C. S 1391(b)(1) (1993). Moreover, this lawsuit could have initially been filed in Washington because it is a patent [*4] infringement matter. See 28 U.S.C. § 1400(b). Therefore, the court will next apply the most relevant public and private factors to the facts of the case as directed by the Third Circuit's decision in Jumara v. State Farm Ins. Co., 55 F.3d 873, 879 (3d Cir.1995). In Jumara, the Third Circuit Court of Appeals identified a nonexclusive list of factors that have been used to guide courts in the exercise of their discretion in ruling on requests for transfer. 55 F.3d at 879-80; see also Affymetrix, Inc. v. Synteni, Inc., 28 F. Supp.2d 192, 19697 (D. Del. 1998). These factors fall into two groups: those relating to the private convenience of the litigants and those affecting the public interest in the fair and efficient administration of justice. Jumara, 55 F.3d at 87980. n1 The court should apply these factors to determine, "on an individualized, case-by-case basis, whether convenience and fairness considerations weigh in favor of transfer." Id. at 883 (citing Stewart Org., Inc. v. Ricoh Corp., 487 U.S. 22, 30-31, 101 L. Ed. 2d 22, 108 S. Ct. 2239 (1988)). [*5] The burden is on moving party to show that balance of convenience and the interests of justice weighs in favor of transfer. See Jumara, at 879. n1 The private interests may include: 1) the plaintiff's original forum preference; 2) the defendant's preference; 3) whether the claim arose elsewhere; 4) the convenience of the parties; 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 books and records (similarly limited to the extent that the files could not be produced in the alternative forum). Jumara, 55 F.3d at 879-880. The public interests may include: 1) the enforceability of the judgment; 2) practical considerations that make the trial easy, expeditious, or in[*6]

expensive; 3) the relative administrative difficulty in the two fora resulting from court congestion; 4) the local interest in deciding local controversies at home; 5) the public policies of the fora; and 6) the familiarity of the trial judge with the applicable state law in diversity cases. Id.

A. Private Factors The court concludes that the balance of the private factors tips slightly in favor of transfer. In this case, the court finds the convenience of the parties, the convenience of the witnesses, and the location of records and books to be the most pertinent of the private factors. Although both parties are incorporated in Delaware, Precor maintains its headquarters in the Western District of Washington and Life Fitness in Franklin Park, Illinois. Additionally, neither of the parties, their witnesses, or any of the potentially relevant documents and records are located in Delaware. Recognizing that the balance of convenience tips toward the Western District of Washington, Precor further argues that Life Fitness will suffer no greater inconvenience in traveling to Washington than Delaware. In contrast, Life Fitness argues that its choice of forum is paramount. The court acknowledges that a plaintiff's choice of forum is a "paramount" consideration that is not to be "lightly disturbed." Schutte v. Armco Steel Corp., 431 F.2d 22, 25 (3d Cir. 1970); see also Jumara v. State Farm Ins. Co., 55 F.3d 873, 879-80 (3d Cir. 1995). In this case, [*7] however, the plaintiff's preference for Delaware is not given as much deference because most of the events at issue, that is, the design and manufacture of the exercise equipment, occurred outside of Delaware. See Britamco Underwriters, Inc. v. Wallace, 56 F. Supp. 2d 542, 545 (E.D. Pa. 1999). "The transfer of a case will generally be regarded as less inconvenient to a plaintiff if the plaintiff has not chosen . . . a forum where the alleged wrongful activity occurred." Continental Casualty Co. v. American Home Assurance Co., 61 F. Supp. 2d 128, 131 (D. Del. 1999). Thus, because the parties are located outside of Delaware, the witnesses as well as the relevant documents and records are located in Washington, and the product at issue was designed and manufactured in Washington, the Western District of Washington is a more convenient forum for the litigation. B. Public Factors and the Interest of Justice Although the private factors tip slightly in favor of the Western District of Washington, the relevant public factors weigh heavily in favor of transfer. Most relevant to the courts inquiry is whether there are practical considerations that would make [*8] trial "easy, expedi-

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tious, or inexpensive." Jumara, 55 F.3d at 879. In this case, there has already been litigation on the '207 patent, a parent patent of the one at issue here, in the Western District of Washington. This matter is on appeal. Moreover, the parties are currently litigating another patent infringement matter involving exercise equipment in the Western District of Washington. n2 Where related lawsuits exist, "it is in the interests of justice to permit suits involving the same parties and issues to proceed before one court." See Liggett Group, Inc. v. R.J. Reynolds Tobacco Co., 102 F. Supp. 2d 518, (D.N.J. 2000) (citations omitted). Thus, the court finds that transferring this case would promote the interests of justice. n2 The parties disagree as to whether this is a directly related matter.

III. CONCLUSION. Finding that the balance of convenience and the interests of justice weigh in favor of transfer, IT IS HEREBY ORDERED that: 1. Precor Incorporated's [*9] Motion to Transfer is GRANTED; and 2. This matter shall be TRANSFERRED to the Western District of Washington. Date: December 12, 2000 Gregory M. Sleet UNITED STATES DISTRICT JUDGE

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EXHIBIT D

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LEXSEE 2006 US DIST LEXIS 50488

Analysis As of: Feb 26, 2007 CASHEDGE, INC., Plaintiff, v. YODLEE, INC., Defendant. Civil Action No. 06-170-JJF UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE 2006 U.S. Dist. LEXIS 50488 July 19, 2006, Decided SUBSEQUENT HISTORY: Reconsideration denied by Cashedge, Inc. v. Yodlee, Inc., 2006 U.S. Dist. LEXIS 61839 (D. Del., Aug. 30, 2006) COUNSEL: [*1] Arthur G. Connolly, III, Esquire, of CONNOLLY BOVE LODGE & HUTZ LLP, Wilmington, Delaware, Of Counsel: Drew M. Wintringham, III, Esquire, and Mark W. Rueh, Esquire, of CLIFFORD CHANCE ROGERS & WELLS LLP, New York City, New York, Attorneys for Plaintiff. William J. Marsden, Jr., Esquire, and Kyle Wagner Compton, Esquire, of FISH & RICHARDSON, P.C., Wilmington, Delaware, Of Counsel: David M. Barken, Esquire, and Craig R. Compton, Esquire, of FISH & RICHARDSON, P.C., Redwood City, California, Attorneys for Defendant. JUDGES: Joseph J. Farnan, Jr., UNITED STATES DISTRICT JUDGE. OPINION BY: Joseph J. Farnan, Jr. OPINION: MEMORANDUM OPINION Farnan, District Judge. Pending before the Court is Defendant's Motion To Transfer (D.I. 12). For the reasons discussed, the Motion will be granted. I. BACKGROUND Plaintiff was issued United States Patent No. 7,013,310 ("the '310 patent"), entitled "Method And Apparatus For Retrieving And Processing Data" on March 14, 2006. That same day, Plaintiff filed its Complaint in this Court, alleging infringement of the '310 patent. (D.I. 1). Defendant filed its Answer and Counterclaim on April 4, 2006, and stated its intent to file a motion [*2] to transfer. (D.I. 5). On May 4, 2006, Defendant filed its Motion to Transfer. (D.I. 12). Defendant's Motion to Transfer is based on a pending action in the Northern District of California, Case No. C-05-1550-SI. On April 14, 2005, Defendant filed a patent infringement action in the Northern District of California, alleging that Plaintiff infringed several of its U.S. Patents. In response, Plaintiff filed an action in the same court, seeking a declaratory judgment of noninfringement, invalidity, and unenforceability of the patents asserted in Defendant's case and additional patents. Those two actions were consolidated into one nine-patent case ("the California action"). The California court conducted a Markman hearing on April 26, 2006. II. PARTIES' CONTENTIONS By its Motion, Defendant contends that, pursuant to 28 U.S.C. § 1404(a), the Court should transfer this action to the Northern District of California. In support of this contention, Defendant argues that Plaintiff's allegations of infringement of the '310 patent are related to the allegations in the California action. Further, Defendant contends that certain patents in the California action [*3] are prior art to Plaintiff's '310 patent and form the basis of Defendant's inequitable conduct defense. n1 In response, Plaintiff contends that the Court should deny the Motion because Plaintiff chose Delaware, the California action is unrelated, and judicial economy would not be served by transfer.

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n1 Defendant alleges that, at a minimum, United States Patent Nos. 6,317,783 ("the '783 patent"), 6,199,077 ("the '077 patent"), and 6,412,073 ("the '073 patent") are material prior art to Plaintiff's '310 patent. (D.I. 5 at P 23).

III. DISCUSSION Under 28 U.S.C. § 1404(a), "[f]or 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). Since it is undisputed that Plaintiff could have brought the instant action in the Northern District of California, the Court's only task is to determine whether the factors [*4] enumerated in Section 1404(a) warrant a transfer under the circumstances. The Third Circuit has set forth a list of factors for district courts to consider when deciding whether or not to transfer venue. Jumara v. State Farm Ins. Co., 55 F.3d 873, 879-80 (3d Cir. 1995). These factors include six private interests: (1) the plaintiff's forum preference as evidenced by his or her original choice, (2) the defendant's preference, (3) whether the claim arose elsewhere, (4) the convenience of the parties due to their relative physical and financial condition, (5) the convenience of the expected witnesses, but only so far as the witnesses might be unavailable for trial if the trial is conducted in a certain forum, and (6) the location of books and records, to the extent that the books and records could not be produced in a certain forum. Id. at 879. The factors also include six public interests for courts to consider: (1) the enforceability of the judgment, (2) practical considerations regarding the ease, speed, or expense of trial, (3) the administrative difficulty due to court congestion, (4) the local interest in deciding local controversies in the home [*5] forum, (5) the public policies of the two fora, and (6) the trial judge's familiarity with the applicable state law in diversity cases. Id. at 879-80. District courts must balance all of the relevant factors and determine whether a transfer of venue would best serve all the aforementioned interests. Id. at 883. The burden is on the movant to establish that the balance of the interests weighs in favor of the requested transfer, and a transfer will be denied if the factors are evenly balanced or weigh only slightly in favor of the transfer. Continental Cas. Co. v. Am. Home Assurance Co., 61 F. Supp. 2d 128, 131 (D. Del. 1999). A. PRIVATE INTERESTS

Although the plaintiff's choice of forum is entitled to substantial deference and should not be lightly disturbed, Shutte v. Armco Steel Corp., 431 F.2d 22, 25 (3d Cir. 1920), when the plaintiff lacks a rational and legitimate reason to litigate in the forum, the transfer of a case to a more appropriate forum is less inconvenient. Brunswick Corp. v. Precor Inc., 2000 U.S. Dist. LEXIS 22222, at *7 (D. Del. Dec. 12, 2000); See Waste Distillation Tech., Inc. v. Pan Am. Res., Inc., 775 F. Supp. 759, 764 (D. Del. 1991). [*6] A corporation's decision to incorporate in a particular state is a rational and legitimate reason to choose to litigate in that state. Stratos Lightwave, Inc. v. E2O Communs., Inc., 2002 U.S. Dist. LEXIS 5653, C.A. No. 01-309 JJF, at *7 (D. Del. March 26, 2002). Accordingly, the first factor weighs against transfer, and Defendant must demonstrate that the other Jumara factors strongly favor a transfer to California. The Court concludes that the other private interest factors weigh in favor of transfer. Here, both parties are Delaware corporations with principal places of business outside Delaware. Plaintiff is headquartered in New York City, and Defendant is headquartered in Redwood City, California. Both parties maintain offices in the Northern District of California. Also, there are likely witnesses, such as former employees, that still reside in the Northern District of California. The location of books and records is neutral as neither party has argued that it would be unable to produce documents in either forum. Importantly, the same parties are currently litigating in the Northern District of California. Although the Court understands that the California [*7] action and this action are different, n2 the technologies at issue all relate to data extraction, retrieval, or presentation through Internet technologies, such as web sites and web pages. The Northern District of California is more convenient for the parties because the parties and potential witnesses are located in that district, the parties have proven capable to litigate there, and the court is already familiar with the parties and their technologies. n2 This action requires claim construction of the claim language of the '310 patent, which is not part of the California action. However, Defendant's patents-in-suit in the California action are relevant to its defenses and counterclaim in this action. B. PUBLIC INTERESTS The Court also concludes that the public interest factors weigh in favor of transfer. Where related lawsuits exist, "it is in the interests of justice to permit suits involving the same parties and issues to proceed before one court." Brunswick, 2000 U.S. Dist. LEXIS 22222, [*8]

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at *8. Factors supporting a decision to transfer include whether the litigation in the target forum involves: (1) the same parties, (2) related or similar technologies for the judge to become familiar with, and (3) a common field of prior art. In this case, judicial efficiency regarding the ease, speed, or expense of trial strongly weigh in favor of transfer. The California action involves the same parties, similar technologies, and related patents-in-suit. The parties in the California action have already conducted a two-hour technology tutorial on April 19, 2006, argued Markman issues in nine patents on April 26, 2006, and commenced discovery on seemingly related products and technologies. Additionally, the Court concludes that public interests such as enforceability of the judgment, familiarity with state law in diversity actions, local interests in deciding local controversies, and court congestion are neutral or non-applicable factors in this case. Jumara, 55 F.3d at 879-880. Accordingly, the interests of judicial efficiency and justice are best served by transferring this case to the Northern District of California.

IV. CONCLUSION In sum, for the [*9] reasons discussed, the Court concludes that the balance of the private and public interest factors support transferring this case to the Northern District of California where related litigation is pending. Accordingly, the Court will grant Defendant's Motion To Transfer (D.I. 12). An appropriate Order will be entered. ORDER At Wilmington, the 19 day of July 2006, for the reasons set forth in the Memorandum Opinion issued this date; IT IS HEREBY ORDERED that the Defendant's Motion To Transfer (D.I. 12) is GRANTED. Joseph J. Farnan, Jr. UNITED STATES DISTRICT JUDGE

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EXHIBIT E

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LEXSEE 2002 US DIST LEXIS 2980

Cited As of: Feb 26, 2007 CORIXA CORPORATION, a Delaware corporation, et al., Plaintiffs, v. IDEC PHARMACEUTICALS CORPORATION, a Delaware corporation, Defendant. C.A. No. 01-615 GMS UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE 2002 U.S. Dist. LEXIS 2980 February 25, 2002, Decided DISPOSITION: [*1] Defendant's motion to transfer action to Southern District of California GRANTED, Matter TRANSFERRED. limited FDA approval of IDEC's drug Zevalin. On September 12, 2001, at approximately 8:33 A.M. PST, IDEC [*2] filed a first amended complaint which included a sixth patent. On September 12, 2001, at 12:07 P.M. EST, Corixa, Coulter, and GlaxoSmithKline (GSK) (collectively "Corixa") filed the above-captioned action against IDEC. n1 Corixa alleges that IDEC is infringing U.S. Patent Nos. 6,015,542, ("the 542 patent"), 6,090,365 ("the 365 patent"), and 5,595,721 ("the 721 patent"). These patents are three of the patents involved in the California declaratory judgment action. n1 On September 28, 2001, Michigan was added as a plaintiff in this action. Presently before the court is IDEC's motion to stay the proceedings, or alternatively, to dismiss or transfer this action to the Southern District of California. n2 For the reasons that follow, the court will grant IDEC's motion to transfer. n2 IDEC sought to stay the proceedings pending a ruling from the California court on a motion to dismiss. On January 30, 2002, the California court denied the motion to dismiss. IDEC's current motion to stay is therefore moot. [*3] II. BACKGROUND

COUNSEL: For CORIXA CORPORATION, COULTER PHARMACEUTICAL INC., SMITHKLINE BEECHAM CORPORATION, plaintiffs: Thomas C. Grimm, Morris, Nichols, Arsht & Tunnell, Wilmington, DE. For IDEC PHARMACEUTICALS CORPORATION, defendant: Philip A. Rovner, Potter Anderson & Corroon, LLP, Wilmington, DE. JUDGES: Gregory M. Sleet, UNITED STATES DISTRICT JUDGE. OPINION BY: Gregory Moneta Sleet OPINION: MEMORANDUM AND ORDER I. INTRODUCTION On September 10, 2001, IDEC Pharmaceutical Corporation ("IDEC") filed a complaint in the Southern District of California against Coulter Pharmaceutical Inc. ("Coulter"), Corixa Corporation ("Corixa"), and the Regents of the University of Michigan ("Michigan"). In its complaint, IDEC seeks a declaratory judgment of noninfringement and/or invalidity of five patents. On September 11, 2001, the Oncologic Drugs Advisory Committee ("ODAC") indicated that it would recommend a

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IDEC is a Delaware corporation with its sole place of business in the San Diego area. Coulter is a Delaware corporation with its principle place of business in the San Francisco Bay area. Corixa is a Delaware corporation based in Seattle, Washington. GSK is a Pennsylvania corporation with its principle place of business in Philadelphia, Pennsylvania. The University of Michigan is a constitutional corporation of the State of Michigan, located in Ann Arbor, Michigan. The patents at issue involve technology for the treatment of lymphoma using targeted radioimmunotherapy. Coulter and Michigan are co-owners of the 542, 365, and 721 patents. Corixa and GSK are the licensees of these patents. Both IDEC and Corixa are currently seeking FDA approval for a commercial embodiment of their respective inventions for the treatment of lymphoma using radioimmunotherapy. With these facts in mind, the court will now turn to the motion presently before it. III. DISCUSSION A. The "First-Filed" Rule Where two patent lawsuits involving the same claims are filed in different jurisdictions, the Federal Circuit requires that the first-filed action be given preference [*4] absent special circumstances. See Genentech v. Eli Lilly & Co., 998 F.2d 931, 937 (Fed. Cir. 1993). 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. See id. at 937. This doctrine applies equally well where the firstfiled action is one for a declaratory judgment. See id. at 938 (noting that, where the declaratory action can resolve the various issues, a first-filed declaratory action is entitled to precedence as against a later-filed patent infringement action.) Applying the first-filed rule, IDEC argues that the present case should be transferred to the Southern District of California. Notwithstanding that the cases at issue are "mirror image" cases where the court is asked to construe the same patents, Corixa argues that the first-filed rule is inapplicable to the present situation. Corixa first argues that GSK has not been joined in the California litigation. The record before the court indicates that GSK is Coulter's licensee. It is unclear whether GSK is an exclusive licensee. However, even were the court to accept [*5] Corixa's argument that GSK is an exclusive licensee, that alone does not indicate that GSK is a necessary party to this litigation. Corixa concedes that GSK is a licensee with fewer than all substantial rights. As such, GSK, while likely a proper party to the California lawsuit, is not a necessary

party. See Intellectual Property Development, Inc. v. TCI Cablevision of California, Inc., 248 F.3d 1333, 1348 (Fed. Cir. 2001) (holding that an exclusive licensee possessing fewer than all substantial rights may not sue in its own name without joinder of the patent owner.) Finally, to the extent that the parties believe that GSK is a necessary party, GSK may request permission to join the California litigation. n3 n3 Corixa expresses concern over whether the California court has subject-matter jurisdiction over an action between IDEC and GSK. As it is not the court's province to determine another court's subject matter jurisdiction, the court expresses no opinion on this. Corixa next argues that the [*6] first-filed rule is inapplicable to the present situation because IDEC improperly "raced to the courthouse" in order to file its motion in California. In support of this contention, Corixa points out that its right to file an infringement suit against IDEC did not ripen until after ODAC recommended that the FDA approve Zevalin. However, before ODAC publicly recommended approval, but after IDEC had reason to believe they would do so, IDEC "raced" to file its declaratory judgment action. The court acknowledges that IDEC's filing seems providential since ODAC's recommendation became public the day after IDEC filed its suit. In its November 6, 2001 Order, however, the California court specifically found that IDEC possessed a reasonable apprehension of suit when it filed its declaratory judgment action. The California court continued by stating that, "an actual controversy existed when IDEC filed the complaint under consideration. Consequently the court finds that IDEC's filing suit was not motivated by "forum shopping alone," but rather was a legitimate exercise of its opportunity under the Declaratory Judgement Act . . . ." This court sees no reason to disagree with the California court's [*7] findings. Given the information presently before it, the court concludes that having two separate trials in mirror image cases would defeat the purposes of the first-filed rule, namely, sound judicial administration and comity among federal courts of equal rank. See EEOC v University of Pennsylvania, 850 F.2d 969, 971 (3d Cir. 1988). Accordingly, the court finds that the application of the rule weighs heavily in favor of transferring this case to the Southern District of California. B. Section 1404(a) Transfer to the Southern District of California is also mandated under a section 1404(a) analysis. Section

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1404(a) provides that "for the convenience of [the] parties and [the] witnesses, in the interest of justice," the court may transfer this action to "any other district where it might have been brought." 28 U.S.C. § 1404(a). There is no dispute that this action could have been filed in the Southern District of California. The court will, therefore, move on with inquiry as directed by the Third Circuit. See Jumara v. State Farm Ins. Co., 55 F.3d 873, 879 (3d Cir. 1995). In Jumara, the Third Circuit provided [*8] a list of factors to assist the district courts in determining "whether, on balance, the litigation would more conveniently proceed and the interests of justice [would] be better served by a transfer to a different forum." Id. These factors include six private and five public interests which the court may consider. See id. 1. The Private Interests The private interests most relevant to this case include: (1) the convenience of the parties as indicated by their relative physical and financial position; (2) the convenience of the witnesses, but only to the extent that they may be unavailable for trial in one of the fora; and (3) the location of records and other documents, again, only to the extent that these files cannot be produced in the alternate forum. n4 n4 For the reasons the court discussed in a previous opinion, it will not afford any weight to the first three Jumara factors, specifically, the plaintiff's initial choice of forum, the defendant's preferred venue, and whether the claim arose elsewhere. See Affymetrix, Inc. v. Synteni, Inc., 28 F. Supp. 2d 192, 197-201 (D. Del. 1998). In not affording weight to these factors, the court avoids the risk of double-counting these interests and thereby throwing off the transfer analysis. See id. Instead, the court will consider whether the Southern District of California is a more convenient forum for the parties and the witnesses, while also serving the interests of justice. See 28 U.S.C. § 1404(a). [*9] a. The Convenience of the Parties Geographically, California is not more inconvenient for the parties than Delaware. Michigan must travel whether the suit is in California or Delaware. GSK is one of the world's largest pharmaceutical companies, and cannot complain about location. The remainder of the parties are based on the West Coast. Furthermore, transfer to California would reduce the overall inconvenience to all parties involved. The parties must already be pre-

pared to litigate the related case currently pending in the Southern District of California. Bringing witnesses and relevant documents to only one location, here California, minimizes the level of disruption caused to all parties by the litigation. This is certainly a more economical and efficient result than having each party moving witnesses and documents between two states, depending on which of these related actions is being litigated at that time. Thus, this factor weighs in favor of transfer. b. The Convenience of Witnesses Party witnesses or witnesses who are employed by a party carry no weight in the "balance of convenience" analysis since each party is able, indeed obligated, to procure the attendance of its [*10] own employees for trial. See Affymeytrix, 28 F. Supp. 2d at 203. Expert witnesses or witnesses who are retained by a party to testify carry little weight in determining where the "balance of convenience" lies because they are "usually selected [on the basis] of their reputation and special knowledge without regard to their residences and are presumably well compensated for their attendance, labor and inconvenience, if any." See id. (internal citations omitted). Fact witnesses who possess first-hand knowledge of the events giving rise to the lawsuit, however, have traditionally weighed quite heavily in the "balance of convenience" analysis. See id. There is no evidence on the record that would indicate that Delaware would be an inconvenient forum for potential non-party witnesses. However, the court notes that all the material witnesses in this dispute, party or otherwise, will be in California already to litigate the related matter now pending in the Southern District of California. Requiring that they come to Delaware to litigate this action separately cannot be considered convenient and in the interest of justice. However, as there is no clear evidence [*11] that a non-party witness will be unable to attend trial in Delaware, this factor must weigh against transfer. c. The Location of Records and Other Documents The technological advances of recent years have significantly reduced the weight of this factor in the "balance of convenience" analysis. See id. at 205. There is no indication that either party would be unable to produce the relevant records and documents in Delaware. Thus, because this factor is relevant only insofar as the documents would be unavailable in one forum, the court finds that this factor must weigh against transfer. From a practical standpoint, however, the court notes that any relevant documents will already be in California for the litigation of that case. The court sees no need to require that the parties move the same documents across the country. Rather, it would be much more

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efficient to litigate these related actions in one location. However, these considerations are more relevant to the first factor discussed supra. 2. The Public Factors As other courts have noted, depending on the circumstances of the case, some of the "public interest" factors listed in Jumara may play no role [*12] in the "balance of convenience." See id. at 205. The court thus elects to discuss only the factors most relevant to the pending case. a. Practical Considerations Making Trial Easy, Expeditious or Inexpensive This factor appears to substantially repeat the "firstfiled" analysis advanced by IDEC, and accepted by the court, in Section III.A, supra. As such, the court declines to further address this issue here, since it has already taken this argument into consideration. b. Delaware's Interest in this Controversy Three of the parties in this action are Delaware corporations. However, while the court is mindful of Delaware's interest, that alone will not tip the "balance of convenience" in its favor. This is so because the court can hardly describe the patents as a local controversy unique to Delaware. See Affymetrix, 28 F. Supp. 2d at 207. Instead, the patents deal with the treatment of lymphoma. This clearly has far-reaching implications. Accordingly, this factor does not weigh against transferring this case to California.

c. Collective Travel Time and Cost A mirror image action is currently pending in California. Thus, to require the parties [*13] to simultaneously litigate virtually the same case on different coasts would certainly increase the collective travel time and cost. Thus, this factor weighs in favor of transfer. IV. CONCLUSION The court concludes that the "balance of convenience" tips strongly in favor of transferring this action to the Southern District of California. For these reasons, IT IS HEREBY ORDERED that:

1. IDEC's alternative motion to transfer this action to the Southern District of California (D.I. 8) is GRANTED. 2. The above-captioned matter is hereby TRANSFERRED to the United States District Court for the Southern District of California.

Dated: February 25, 2002 Gregory M. Sleet UNITED STATES DISTRICT JUDGE

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EXHIBIT F

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LEXSEE 1996 US DIST LEXIS 11922

Analysis As of: Feb 26, 2007 EBW, INC., a Michigan corporation, v. ENVIRON PRODUCTS, INC. and MICHAEL C. WEBB, Defendants. No. 1:96-cv-144 UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF MICHIGAN, SOUTHERN DIVISION 1996 U.S. Dist. LEXIS 11922 July 8, 1996, Decided July 8, 1996, FILED PRIOR HISTORY: [*1] 96-cv-04994. DISPOSITION: Defendants' motion for a transfer granted and transfered action in its entirety to the United States District Court for the Eastern District of Pennsylvania On February 28, 1996, plaintiff EBW, Inc. filed this action against the defendants seeking, inter alia, a declaratory judgment that U.S. Patent No. 5,297,896 (the " '896 patent") is invalid. The defendants, Michael C. Webb, the claimed inventor of the hazardous fluid containment [*2] system which is the subject of the '896 patent, and Environ Products, Inc., Webb's assignee, have filed a motion seeking the dismissal of this action, or, alternatively, a stay or transfer of the proceedings. The basis for the motion is that the same claims involving related parties are at issue in an earlier-filed action currently pending in the United States District Court for the Eastern District of Pennsylvania. For the reasons to follow, the court hereby GRANTS the motion to transfer and hereby transfers this action to the United States District Court for the Eastern District of Pennsylvania. FACTS Environ is a Delaware corporation having its principal place of business in Lionville, Pennsylvania. Webb is a Pennsylvania resident. On March 25, 1992, Environ filed with the United States Patent and Trademark Office an application for a patent on a flexible, coaxial pipe for secondary containment of hazardous fluids ("the invention"). On March 29, 1994, Environ's application issued as the '896 patent. On November 15, 1995, Environ filed suit in the United States District Court for the Eastern District of Pennsylvania against Advanced Polymer Technology, Inc. ("APT"), [*3] a Michigan corporation doing busi-

COUNSEL: For EBW, INC., a Michigan corporation: Marshall G. MacFarlane. For ENVIRON PRODUCTS, INC., deft: Terence J. Linn, Van Dyke, Gardner, Linn & Burkhart, LLP, Grand Rapids, MI. John J. Marshall, Joseph R. DelMaster, Jr., James J. Kozuch, Seidel Gonda Lavorgna & Monaco, Philadelphia, PA. For MICHAEL C. WEBB, deft: Terence J. Linn, (See above). John J. Marshall, (See above). Joseph R. DelMaster, Jr., (See above). James J. Kozuch, (See above). JUDGES: Wendell A. Miles, Senior Judge OPINION BY: Wendell A. Miles OPINION: OPINION AND ORDER ON DEFENDANTS' MOTION TO DISMISS FOR IMPROPER VENUE OR, IN THE ALTERNATIVE, TO TRANSFER TO THE EASTERN DISTRICT OF PENNSYLVANIA, OR TO STAY THESE PROCEEDINGS PENDING THE OUTCOME OF THE PENNSYLVANIA ACTION

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ness in Indiana, and Leo J. LeBlanc, alleging, inter alia, infringement of the '896 patent. LeBlanc is the majority owner and president of EBW. APT and EBW share common shareholders, officers, and directors. LeBlanc, in his capacity as owner and president of EBW, exercises active control over the activities of APT. At one point, EBW apparently owned stock in Environ and LeBlanc served on Environ's board of directors. Environ's complaint in the Eastern District of Pennsylvania action specifically alleges that LeBlanc, while a member of Environ's board, became privy to confidential information regarding the invention and copied it for APT's use. Environ's complaint also alleges that APT is currently selling underground containment chambers and underground flexible coaxial pipe for use in secondary containment systems that infringe Environ's '896 patent. Although APT and LeBlanc filed a joint answer in the Pennsylvania action in which they contended that venue was more properly laid in the Western District of Michigan, this court's review of the docket in that proceeding indicates that they have not filed a motion for change of venue. APT and LeBlanc's [*4] joint answer also identifies EBW as APT's "predecessor in interest." n1 Finally, APT and LeBlanc's joint answer includes counterclaims against Environ for federal and state unfair competition; conversion; unjust enrichment; breach of fiduciary duties; fraud; and joint inventorship. n1 In its brief filed in opposition to the present motion, EBW states that "LeBlanc and his co-inventors assigned all title, rights and interest to APT." Plaintiff's Reply [sic] to Defendants' Motion to Dismiss for Improper Venue or, in the Alternative, to Transfer or to Stay at p.6. On February 28, 1996, EBW, acting through the same Michigan attorney who has identified himself as "lead counsel" for APT and LeBlanc in the Pennsylvania federal court proceeding, filed this action against Environ and Webb. EBW's eleven-count complaint alleges that its "principal," LeBlanc, is the true inventor of the subject of the '896 patent and that Webb was able to falsely claim inventorship after obtaining confidential information about the invention [*5] while participating in a joint enterprise between EBW and Environ for the development, manufacture, and sale of components for fluid storage and distribution systems. When the companies parted ways, EBW alleges, Webb and Environ filed the '896 patent application on the invention without EBW's knowledge and without obtaining an assignment, license, or other authority from LeBlanc or EBW. n2 Of EBW's eleven claims in this action, the first seven virtually mirror the counterclaims of APT and LeBlanc asserted against Environ in the Pennsylvania action. n3 As

part of its prayer for relief in the present case, EBW's complaint demands a declaratory judgment that the '896 patent is invalid; demands that the court compel Environ and Webb to "immediately execute an assignment of all right, title and interest in and to the '896 patent to [EBW]"; and demands that the court enter an order "correcting the designation of inventorship" of the '896 patent. n2 One count of EBW's complaint, labelled "Fraud on Shareholders and Directors," alleges that Environ and Webb concealed the existence of the '896 patent application during negotiations for re-acquisition of EBW's stock in Environ. The court notes that both the Stock Purchase Agreement and the Stock Redemption Agreement, copies of which have been provided by defendants as exhibits to their motion, provide that the relationship between EBW and Environ is to be governed by Pennsylvania law. [*6]

n3 The remaining four claims asserted by EBW against Environ and Webb in this action include claims for breach of contract; fraud on shareholders and directors; breach of employment agreement (against defendant Webb only); and a claim for a declaratory judgment that the '896 patent is invalid. Court records reveal that the action pending in the Eastern District of Pennsylvania has proceeded through the issuance of a case management order which provides that the parties are to engage in discovery on the issue of the ownership of the rights to the invention which is the subject of the '896 patent. ANALYSIS In their motion, the defendants argue that venue is improper in this district under the "first-to-file rule, which provides that, in the absence of compelling circumstances, the federal court first seized of jurisdiction over a dispute should be permitted to adjudicate the controversy fully. The defendants also argue that because this action arises out of the same transactions and occurrences and involves the issue of ownership of the same patent rights as the prior-filed action, the avoidance [*7] of wasteful duplication of effort and the possibility of inconsistent verdicts weigh in favor of a dismissal of this action, a transfer to the Eastern District of Pennsylvania, or at least a stay of these proceedings pending the outcome of the Pennsylvania case.

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"The federal courts long have recognized that the principle of comity requires federal district courts--courts of coordinate jurisdiction and equal rank--to exercise care to avoid interference with each other's affairs." West Gulf Maritime Ass'n v. ILA Deep Sea Local 24, 751 F.2d 721, 728 (5th Cir. 1985) (citing Kerotest Mfg. Co. v. CO-Two Fire Equipment Co., 342 U.S. 180, 96 L. Ed. 200, 72 S. Ct. 219 (1952) and Covell v. Heyman, 111 U.S. 176, 182, 28 L. Ed. 390, 4 S. Ct. 355 (1884)). "'As between federal district courts, . . . the general principle is to avoid duplicative litigation.'" West Gulf, 751 F.2d at 728 (quoting Colorado River Water Conservation Dist. v. United States, 424 U.S. 800, 817, 47 L. Ed. 2d 483, 96 S. Ct. 1236 (1976)); see also In re American Medical Systems, Inc., 75 F.3d at 1069, 1088 (6th Cir. 1996) ("Although there is no precise rule that, as between federal district courts, [*8] one court should defer to the other, 'the general principle is to avoid duplicative litigation'") (citations omitted). In order to avoid such duplication and to avoid the possibility of rulings which may trench upon the authority of sister courts, a district court may dismiss an action where the issues presented can be resolved in an earlier-filed action pending in another district court. West Gulf, 751 F.2d at 729. In the alternative, because "primary jurisdiction attaches in the forum in which the action is first instituted[,]" a district court may transfer the later-filed action to the district where the earlier-filed action is pending, provided that the transferee district is one where the later-filed action "might have been brought." Parker-Hannifin Corp. v. Samuel Moore and Co., 436 F. Supp. 498, 501-02 (N.D. Ohio 1977) (citing, inter alia, Barber-Greene Co. v. Blaw-Knox Co., 239 F.2d 774 (6th Cir. 1957)). Although EBW has admitted that the Eastern District of Pennsylvania is a jurisdiction in which this action could have been brought, EBW has opposed the defendants' motion. EBW makes a number of legally and factually meritless arguments in opposing the motion. [*9] First, EBW argues that the "first-to-file" principle invoked by the defendants only applies where the pending cases involve "the same parties and the same issues[.]" Plaintiff's Reply [sic] to Defendants' Motion to Dismiss for Improper Venue or, in the Alternative, to Transfer or to Stay (hereinafter "Plaintiff's Reply") at p. 9. This is simply not true; a precise identity of parties is simply not required. Had EBW bothered to review the case law cited in its own brief or in the defendants' motion, EBW undoubtedly would not have made such a meritless argument. As for EBW's suggestion that all of the issues raised in both actions must be identical, this proposition is likewise unsupported by any citation to authority. The same invention, the same patent, and same series of events are at issue in both actions; this common subject

matter and the substantial overlap between the two actions clearly supports the defendants' argument that duplication of effort and possibly inconsistent outcomes are threatened. That this action involves additional claims not raised in the Pennsylvania action--claims clearly arising out of the same subject matter and facts--may support a conclusion that [*10] a transfer would be proper rather than a dismissal, but it does not support the proposition that both cases should proceed independently in different districts. Seemingly ignoring the contents of its own complaint, however, EBW makes the rather incredible argument that the two cases are "not related" (Plaintiff's Reply at p. 14) because EBW does not claim ownership of the '896 patent. Incredibly, EBW repeats this argument at various points throughout its brief filed in opposition to the defendants' motion. See Plaintiff's Reply at p. 12 ("plaintiff EBW does not claim ownership of the '896 patent"); id. at p. 13 ("Again, Plaintiff EBW has not made a claim of ownership with respect to the '896 patent in this case, and APT and LeBlanc certainly do not require Plaintiff EBW as a party in the Pennsylvania action in order to preserve their claims of ownership regarding the '896 patent"); id. ("Plaintiff EBW does not claim ownership of the '896 patent"); id. ("Plaintiff EBW is not a co-owner or co-inventor of the '896 patent or the patent which was filed by LeBlanc et al and which was subsequently assigned to APT"); see also id. at p. 7 ("Defendant Environ's complaint [*11] in the Pennsylvania action did not name Plaintiff EBW as a party since Plaintiff EBW does not manufacture, use or sell the alleged infringed product nor does Plaintiff EBW own any right, title or interest in LeBlanc's patent application which is currently involved in an interference proceedings [sic] within the United State [sic] Patent and Trademark Office"). This argument directly conflicts with the rather specific allegations of EBW's complaint, which state as follows:

Upon learning of the illegal conduct of Defendants, Plaintiff immediately petitioned the United States Patent Office to declare an interference between the application filed by Webb . . . and the pending application filed by LeBlanc . . . [Complaint, P 16] Defendants have misappropriated Plaintiff's intellectual property. . . . [Complaint, P 21] Defendants wrongfully converted the Plaintiff's confidential information by stealing said information and using said

Case 1:07-cv-00067-MPT

Document 8-2

Filed 02/26/2007

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1996 U.S. Dist. LEXIS 11922, *

information for their own use in applying for a patent, and in creating and manufacturing products which were copies of the Plaintiff's invention. [Complaint, P 32] The Defendants have converted Plaintiff's valuable intellectual [*12] property for their own use . . . [Complaint, P 33] Defendants have unfairly used confidential information obtained, in confidence, from Plaintiff, all for the profit and enrichment of Defendants. [Complaint, P 35] In breach of their fiduciary duty to the Plaintiff, Defendants misappropriated valuable proprietary information belonging to the Plaintiff, using said information for the Defendants' own enrichment. [Complaint, P 39] Defendants' asserted ownership of the above '896 patent creates a substantial threat that the Defendants will seek to enforce an invalid patent . . . [Complaint, P 46] Plaintiff is entitled to a determination of inventorship from this Court, and an order requiring correction of the inventorship of the '896 patent. [Complaint,