First-to-File and Choice-of-Forum Roots Run Too Deep For Micron to Curb Most Races to Courthouse

This principle continues to ring true for venue battles waged in patent infringement cases, even after Micron Technology, Inc. v. MOSAID Technologies, Inc.³ The Micron panel attempted to weaken the “first-to-file” rule and thereby limit opportunities for races to the courthouse otherwise enhanced by the Supreme Court’s decision in MedImmune, Inc. v. Genentech, Inc.4, a case that generally increased availability of declaratory judgment actions. Whether Micron actually weakens the “first-to-file” rule remains to be seen.

Micron purports to equate the analysis of a motion for discretionary disposition of a duplicative patent case with that used for motions to transfer under 28 U.S.C. § 1404(a). Yet Micron leaves several fundamental questions unanswered, including choice of law, the role of the “first-to-file” rule, and allocations of burdens of proof. The “first-to-file” rule evolved over almost 200 years as a principle of Supreme Court and regional circuit law, which district courts will continue to apply in patent cases, unless and until Federal Circuit fleshes out the unanswered questions of Micron. Many courts accord the “first-to-file” rule burden-shifting weight and, importantly, let the “first-to-file” rule dictate which court will hear venue-related arguments. The weight of this authority is unmoved by Micron’s silence on fundamental analytical issues, with one possible significant exception. Micron suggests that courts in patent cases may no longer be free to transfer the case solely upon finding that another court was the first-filed forum, thus forcing even second-filed forums to hear substantive arguments on § 1404(a) “convenience factors.” Even under that regime, however, the existence of litigation filed first elsewhere should still weigh significantly as an “interest of justice” factor in the overall analysis. Thus, despite Micron, litigants can still benefit from winning the race to the courthouse, so long as the forum chosen by the winner bears some legitimate relationship to the underlying facts.

Notes

¹ Mr. Cicero is a Member in the Atlanta office of Womble Carlyle Sandridge & Rice, PLLC (“Womble Carlyle”), and concentrates his practice on intellectual property litigation. Mr. Cicero wishes to thank Mr. Kirk W. Watkins, a fellow Member at Womble Carlyle’s Atlanta office, for providing valuable guidance to finalization of this article. The views herein expressed are solely those of the author and are not necessarily the views of Womble Carlyle or its clients, are set forth only for purposes of discussion of the state of the law as of the date of this article, and should not be construed as legal advice. Any questions concerning the application of legal principles to particular facts should be presented in confidence to appropriate legal counsel.
² Attributed to Damon Runyon (1884-1946). See http://en.wikiquote.org/wiki/Damon_Runyon.
³ 518 F.3d 897, 86 U.S.P.Q.2d 1038 (Fed. Cir. 2008), reh’g denied (Apr. 7, 2008).
⁴ ___ U.S. ___, 127 S.Ct. 764, 81 U.S.P.Q.2d 1225 (2007).