Tuesday, March 5, 2013, 10:51 AM

Dismissal of "First-Filed" Action does not Compel Re-transfer of Second Action to Original Forum

As initially reported in our August 13, 2012 post, a patent infringement action filed by International Growers Supply, Inc. ("IGS") was transferred from the Central District of California to the Northern District of Georgia based on the "first-to-file" rule because the defendants had previously filed a declaratory judgment action against IGS.  IGS successfully moved to dismiss the declaratory judgment action for lack of personal jurisdiction, as reported in our January 18, 2013 post.  Judge Pannell also stayed the infringement action pending ex parte reexamination of one of the patents-in-suit by the USPTO.  In that January post, we noted that IGS would be expected to move to transfer the infringement action back to the Central District of California once the case was reopened.  Indeed, following the February 22, 2013 issuance of an Ex Parte Reexamination Certificate, on February 24, 2013, IGS filed a motion to reopen the infringement action and to "re-transfer" the action back to the original venue.

Just two days after IGS filed its motion, Judge Pannell issued a brief order reopening the case but denying IGS's motion to transfer because it had not addressed any of the traditional factors courts consider in determining whether to transfer a case.  Specifically, Judge Pannell pointed out that IGS failed to address the threshold question of whether the California court would have personal jurisdiction over the defendants in the action.[1]  In fact, the California court, in its order to transfer the case to Georgia based on the "first-to-file" rule, had expressed "doubts over its ability to exercise personal jurisdiction over at least some of the Defendants."  In its motion, IGS's sole argument was that the only reason for transferring the case to Georgia had been removed and thus a "re-transfer" was appropriate.  Judge Pannell held that, without addressing the relevant factors, IGS could not meet its burden to show that the California court was more convenient.

Again, IGS may be expected to file a renewed motion to transfer the case to the Central District of California, taking Judge Pannell's advice to give due treatment to each of the relevant factors.  The Court ordered the parties to file a revised joint preliminary report and discovery plan within twenty days of the order.

International Growers Supply, Inc. v. Atlantis Hydroponics, Inc., et al., 1:12-cv-2728-CAP, Dkt. No. 57 (N.D. Ga. Feb. 26, 2013) (Pannell, J.).
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[1] 28 U.S.C. 1404(a) provides: "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 or to any district or division to which all parties have consented."

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