The opinion of the court was delivered by: Honorable Sean F. Cox United States District Judge
OPINION & ORDER GRANTING DEFENDANTS' MOTION TO DISMISS [Doc. No. 11]
Plaintiff Magna Mirrors of America, Inc. ("Magna") filed this declaratory action on June 15, 2009, seeking adjudication of several patents owned by Dura Operating Corp. ("Dura") as invalid and unenforceable. This action was listed as a possible companion case to an action filed by Dura in the Eastern District of Texas [See E.D. Tex. Case No. 08-000455]. The matter is before the Court on Dura's Motion to Dismiss [Doc. No. 11], in which Dura argues that this case should be dismissed in favor of Dura's first-filed action in the Eastern District of Texas. The parties have fully briefed the issues, and the Court declined to hear oral argument pursuant to L.R. 7.1(f)(2). For the reasons below, the Court GRANTS Dura's motion [Doc. No. 11].
Dura filed its complaint in the Eastern District of Texas ("the Texas action") on November 26, 2008, alleging that Magna infringed upon the claims of several Dura-owned patents: U.S. Patent Nos. 5,522,191; 5,799,449; 5,442,880; and 5,551,193 ("the patents-in-suit").
The defendant in a patent infringement action will often file a declaratory action counterclaim, in which the defendant will seek an order invalidating the patents they are alleged to have infringed upon. Instead of filing this declaratory action as a counterclaim in the Texas action, however, Magna instead chose to file its claim in the Eastern District of Michigan.*fn1
In the instant action, Magna seeks an order from the Court invalidating the patents-in-suit - the same patents involved in the Texas action. Magna filed its complaint in the instant action on June 15, 2009 - roughly seven months after Dura filed its complaint in the Texas action, and after Magna had been served with Dura's complaint.
Dura filed this motion on November 25, 2009, arguing that Magna's action should be dismissed in favor of Dura's first-filed complaint in the Texas action.*fn2 [See Def.'s Br., Doc. No. 11, p.1]. Magna opposes Dura's motion to dismiss, arguing that Dura's decision to file the Texas action there - rather than in this Court, where the parties are already engaged in litigation -is evidence of forum-shopping. [Pl.'s Br., Doc. No. 13, p.1].
The first-to-file rule is "a well-established legal doctrine that encourages comity among federal courts of equal rank." Certified Restoration Dry Cleaning Network, LLC v. Tenke Corp., 511 F.3d 535 (6th Cir. 2007). According to the Sixth Circuit:
The rule provides that when actions involving nearly identical parties and issues have been filed in two different district courts, the court in which the first suit was filed should generally proceed to judgment.
Zide Sport Shop of Ohio v. Ed Tobergte Assoc., Inc., 16 Fed. Appx. 433, 437 (6th Cir. July 31, 2001). Applied to this case, Dura argues that the first-to-file rule counsels this Court to dismiss the instant action in favor of Dura's first-filed Texas action. [See Def.'s Br., Doc. No. 11, p.1].
In opposition to Dura's motion, Magna advances two arguments: 1) that "the 'first-filed' rule is not mandatory, and has many exceptions that are applicable to this case. . . ;" and 2) that this Court should hold a decision on the instant motion "in abeyance pending a decision from the Eastern District of Texas" on Magna's own motion to dismiss in the Texas action. [See Pl.'s Br., Doc. No. 13, p.1]. Neither of these arguments have merit.
I. Jurisdiction in the Texas Action is Not Properly a Question for This Court
A preliminary matter bears comment. Much of Magna's argument centers around the propriety of the Texas action being tried in the Eastern District of Texas - as opposed to the Eastern District of Michigan, where Magna contends these suits should properly be litigated. There is a motion to dismiss or transfer, filed by Magna, pending in ...