United States District Court, D. Massachusetts
ORDER ON PENDING MOTIONS (DOCS. NO. 25, 36,
SOROKIN, UNITED STATES DISTRICT JUDGE.
motions are pending before the Court.
The Heat Factory USA, Inc. (“Heat Factory”) filed
a motion to dismiss or transfer Count II (the Patent claim)
arising out of an alleged lack of venue in this district and
to dismiss or stay Counts I and III in favor of an action
filed in California state court. Doc. No. 36. Since that
motion was filed, the state court action, which was
originally filed on January 18, 2018, Doc. No. 37 at 3, was
removed to the U.S. District Court for the Southern District
of California on August 20, 2018, Doc. No. 42 at 5.
identical actions are proceeding concurrently in two federal
courts, entailing duplicative litigation and a waste of
judicial resources, the first filed action is generally
preferred in a choice-of-venue decision.” Cianbro
Corp. v. Curran-Lavoie, Inc., 814 F.2d 7, 11 (1st Cir.
1987). And “[a]fter the removal of an action from state
court . . . [t]he case will proceed as if it originally had
been brought in the federal court.” 14C Fed. Prac.
& Proc. Juris. § 3738 (4th ed.). As a result, when a
state court action is later removed to federal court, the
date of the action's filing in state court, rather than
the date of removal, remains the relevant date. See
Feinstein v. Brown, 304 F.Supp.2d 279, 282 (D.R.I.
2004); see also Falafel Republic Mediterranean Foods,
Inc. v. Tarazi Specialty Foods, Inc., No.
12-cv-10551-NMG, 2012 WL 12941889, at *10 (D. Mass. Sept. 28,
2012) (Collings, M.J.) (concurring and reasoning that this
rule prevents potential gamesmanship of “waiting to
remove pending actions until after . . . fil[ing] a separate
action in another court”), SleepMed Inc. v. Pulse
Sys., Inc., No. 15-cv-14041-IT, 2016 WL 7852466, at *1
(D. Mass. May 27, 2016) (applying this rule where no party
present action was filed on February 6, 2018, Doc. No. 1,
after the filing of the California state court action on
January 18. The action currently pending in the Southern
District of California is therefore the first-filed action.
Both Heat Factory and Plaintiff Schawbel Technologies LLC
(“Schawbel”) have described the two actions as
sufficiently identical as to trigger the first-filed rule.
Doc. No. 38-2 at 4 (Schawbel describing this action as
“substantially identical” to the California
action), Doc. No. 37 at 9 (Heat Factory describing “the
identities of the parties in each suit [as] identical and the
issues [as] substantially similar”).
parties agree with the foregoing analysis. Schawbel contends,
however, that the Court should invoke an exception to the
first-filed rule to deny the motion to dismiss or transfer.
“There are at least two exceptions to the first-filed
rule. The first is where there are special circumstances
justifying a transfer, such as where the party bringing the
first-filed action engaged in misleading conduct in order to
prevail in a pre-emptive race to the courthouse. The second
is where the balance of convenience substantially favors the
second-filed action.” See Transcanada Power Mktg.,
Ltd. v. Narragansett Elec. Co., 402 F.Supp.2d 343, 347
(D. Mass. 2005) (internal quotations omitted).
reasons persuade the Court that neither exception is
applicable to this Court's decision. The rule itself
expresses a preference, at least, for the judge presiding
over the first-filed case to determine whether the exception
applies. See EMC Corp. v. Parallel Iron, LLC, 914
F.Supp.2d 125, 129 (D. Mass. 2012); see also TPM
Holdings, Inc. v. Intra-Gold Indus., Inc., 91 F.3d 1, 4
(1st Cir. 1996) (“Where the overlap between the two
suits is nearly complete, the usual practice is for the court
that first had jurisdiction to resolve the issues and the
other court to defer.”). No reason in this case
warrants deviating from that salutary practice. And while
venue for the patent claim unequivocally lies in California,
the question of whether venue for that claim also lies in
this district presents a more complicated question.
Schawbel expresses a concern that dismissal of this action
will result in prejudicial delay, especially given that the
products at issue are retail products appropriate for use in
winter. But because the parties have fully briefed the issue,
nothing prevents Schwabel from (1) filing a motion for a
prompt hearing on a preliminary injunction in the federal
court in California with the parties' memoranda as
exhibits and/or (2) seeking an expedited scheduling
conference or early evaluation under the local rules in
California in light of the limited paper discovery that has
occurred in this district to date.
foregoing reasons, the Court ALLOWS Heat Factory's motion
to dismiss. Schawbel's motions to compel and for a