Time Warner Cable, Inc., v. USA Video Technology Corp., C.A. No. 06-387-***, October 31, 2007.
Thynge, M.J. Defendant’s motion to dismiss the complaint in favor of a first filed action in Texas is granted. The motion to stay or transfer to Texas is denied as moot. Plaintiff’s motion to enjoin duplicative litigation is denied as moot.
This is an action filed June 15, 2006 seeking a declaratory judgment that the patent-in-suit entitled “Store and Forward Video System” is noninfringed, invalid, and unenforceable. The patent is directed to video-on-demand systems. Defendant counterclaimed and moved to stay or transfer to the Eastern District of Texas, filed two days before the Delaware action. In September, 2006, plaintiff moved to enjoin defendant from proceeding with duplicative litigation in Texas. The court finds that the Texas court had jurisdiction over the subject matter of the dispute despite the fact that the plaintiff in the Delaware action (TWC) had not been joined in the Texas action until after the Delaware complaint had been filed. A related party (TWI) was originally named in the Texas action along with other defendants and then dismissed. The two suits involve the same facts and accused products. The first-filed rule applies if the later action involves the same subject matter, not necessarily the same parties. Exceptions to the first-filed rule are found inapplicable.
A copy of the full opinion is available here.
