Silver Line Building Products LLC v. J-Channel Industries Corp.

12 F. Supp. 3d 320, 2014 U.S. Dist. LEXIS 39749, 2014 WL 1221338
CourtDistrict Court, E.D. New York
DecidedMarch 24, 2014
DocketNo. 13-CV-6561 (JFB)(AKT)
StatusPublished
Cited by6 cases

This text of 12 F. Supp. 3d 320 (Silver Line Building Products LLC v. J-Channel Industries Corp.) is published on Counsel Stack Legal Research, covering District Court, E.D. New York primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

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Silver Line Building Products LLC v. J-Channel Industries Corp., 12 F. Supp. 3d 320, 2014 U.S. Dist. LEXIS 39749, 2014 WL 1221338 (E.D.N.Y. 2014).

Opinion

memorandum and order

JOSEPH F. BIANCO, District Judge.

On November 26, 2013, Silver Line Building Products LLC (“Silver Line” or “plaintiff’) commenced this action against J-Channel Industries Corporation (“J-Channel” or “defendant”), seeking a declaratory judgment that windows manufactured, sold, and marketed by Silver Line do not infringe on United States Reissue Patent No. 40,041 (“the '041 patent”). This is the second action filed concerning the alleged infringement of the '041 reissue patent by Silver Line windows. Approximately six weeks before Silver Line commenced this action against J-Channel, on October 9, 2013, J-Channel filed suit against Silver Line’s parent company, Andersen Corporation (“Andersen”), in the Eastern District of Tennessee, alleging that Silver Line windows infringe on the '041 patent (the “Tennessee Action”). On December 9, 2013, J-Channel filed in the Tennessee Action an amended complaint, which replaced Andersen with Silver Line as a defendant. On December 23, 2013, Silver Line moved in the Eastern District of Tennessee to transfer the Tennessee Action to this district. That motion remains pending.

Presently before this Court is J-Channel’s motion to dismiss, stay, or transfer this action to the Eastern District of Tennessee. For the following reasons, the Court grants J-Channel’s motion to stay this action while Silver Line’s motion to transfer the Tennessee Action remains pending in the Eastern District of Tennessee. First, the Court determines that the Tennessee Action is the first-filed action under the Federal Circuit’s first-to-file rule, which “generally favors pursuing only the first-filed action when multiple lawsuits involving the same claims are filed in different jurisdictions.” Merial Ltd. v. Cipla Ltd., 681 F.3d 1283, 1299 (Fed.Cir.2012). As explained infra, it is clear that the Tennessee Action was filed first, and both the Tennessee Action and this action involve the same patent and the same allegedly infringing products. In such circumstances, it is inconsequential that Silver Line did not become a party to the Tennessee Action until after it commenced this action. Second, having determined that the Tennessee Action is the first-filed action, the Court considers the applicability of any exception to the general rule favoring adjudication in the forum of the first-filed action. Here, in particular, Silver Line asserts that the balance of convenience factors favors this forum over the Eastern District of Tennessee. Because the Tennessee Action is the first-filed action, the Court concludes that the Eastern District of Tennessee is the more appropriate forum to determine whether an exception to the first-to-file rule applies. Accordingly, the Court stays this action pending a decision on Silver Line’s pending motion to transfer venue in the Eastern District of Tennessee.

I. BACKGROUND

A. The Tennessee Action

On October 9, 2013, J-Channel filed suit in the Eastern District of Tennessee against Andersen and Home Depot [323]*323U.S.A., Inc. (“Home Depot”) for infringement of the '041 patent. (See Compl., J-Channel Indus. Corp. v. Home Depot U.S.A., Inc., No. 13-CV-606 (E.D.Tenn. Oct. 9, 2013) (“Tenn. Compl.”).1) Andersen is the parent company of Silver Line, having acquired Silver Line in 2006. (Decl. of Timothy E. Grochocinski ¶ 10, Jan. 15, 2014.) J-Channel alleged that it was the assignee of the '041 reissue patent (Tenn. Comply 12), and that Andersen and Home Depot infringed at least one claim of the '041 reissue patent by manufacturing and selling the “Silver Line by Andersen 3000 Series Double-Hung Window” and the “American Craftsman by Andersen 70 Double Hung Fin Vinyl Window” (id. ¶¶ 14-15).

J-Channel has filed similar lawsuits in the Eastern District of Tennessee against other defendants for infringement of the '041 reissue patent. Including the Tennessee Action, there are currently twenty-two pending cases in the Eastern District of Tennessee alleging infringement of the '041 reissue patent.2 On October 17, 2013, Magistrate Judge C. Clifford Shirley, Jr. of the Eastern District of Tennessee found that these twenty-two cases are related because all allege infringement of the '041 reissue patent, and ordered that all twenty-two cases be assigned to a single district court judge and magistrate judge. (See Order, ECF No. 6, J-Channel Indus. Corp. v. Home Depot U.S.A., Inc., No. 13-CV-606 (E.D.Tenn. Oct. 17, 2013).)

On November 26, 2013, Andersen moved to dismiss the complaint in the Tennessee Action. Andersen asserted that Silver Line, not Andersen, manufactures, markets, and sells the Silver Line 3000 Series and American Craftsman 70 Series Windows. (See Mot. & Mem. of Law, ECF Nos. 15-16, J-Channel Indus. Corp. v. Home Depot U.S.A., Inc., No. 13-CV-606 (E.D.Tenn. Nov. 26, 2013).) On December 9, 2013, after Andersen filed its motion to dismiss, J-Channel filed an amended complaint against Silver Line and Home Depot for infringement of the '041 reissue patent.

B. The Instant Action

On November 26, 2013 — the same day that Andersen moved to dismiss the complaint in the Tennessee Action-Silver Line filed suit against J-Channel in this Court. Pursuant to the Declaratory Judgment Act, 28 U.S.C. §§ 2201-2202, Silver Line seeks a declaration that its windows, including the Silver Line 3000 Series Double-Hung Window and the American Craftsman 70 Double Hung Fin Vinyl Window, do not infringe any claim of the '041 reissue patent, and that the '041 reissue patent is invalid and unenforceable. (Compl. ¶ 1.)

On January 15, 2014, J-Channel filed a motion to dismiss, stay, or transfer this action to the Eastern District of Tennessee. Silver Line opposed the motion on February 14, 2014, and J-Channel replied on February 28, 2014. The Court heard oral argument on J-Channel’s motion on [324]*324March 12, 2014. The Court has fully considered the submissions of the parties.

II. Discussion

A. Legal Standard

The Federal Circuit has explained that “[t]he ‘first-to-file’ rule is a doctrine of federal comity, intended to avoid conflicting decisions and promote judicial efficiency, that generally favors pursuing only the first-filed action when multiple lawsuits involving the same claims are filed in different jurisdictions.” Merial, 681 F.3d at 1299. Specifically, “[w]hen two actions that sufficiently overlap are filed in different federal district courts, one for infringement and the other for declaratory relief, the declaratory judgment action, if filed later, generally is to be stayed, dismissed, or transferred to the forum of the infringement action.” Futu-rewei Techs., Inc. v. Acacia Research Corp., 737 F.3d 704, 708 (Fed.Cir.2013). “Resolution of whether the second-filed action should proceed presents a question sufficiently tied to patent law that the question is governed by [the Federal Circuit’s] law.” Id. The Federal Circuit adopted the first-to-file rule for patent cases in Genentech, Inc. v. Eli Lilly and Co.,

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12 F. Supp. 3d 320, 2014 U.S. Dist. LEXIS 39749, 2014 WL 1221338, Counsel Stack Legal Research, https://law.counselstack.com/opinion/silver-line-building-products-llc-v-j-channel-industries-corp-nyed-2014.