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Interactive Fitness Holdings, LLC, A Delaware Company v. Icon Health & Fitness

April 5, 2011

INTERACTIVE FITNESS HOLDINGS, LLC, A DELAWARE COMPANY, PLAINTIFF,
v.
ICON HEALTH & FITNESS, INC., A DELAWARE CORPORATION,
DEFENDANT.



The opinion of the court was delivered by: Lucy H. Koh United States District Court

United States District Court For the Northern District of California

ORDER GRANTING MOTION TO TRANSFER AND TRANSFERRING CASE

Defendant ICON Health & Fitness, Inc. (ICON) moves to dismiss this action or, in the alternative, transfer this case to the District of Utah. See Motion (Dkt. No. 13). The Court finds 20 this matter suitable for decision without oral argument. See Civil Local Rule 7-1(b). Accordingly, 21 the hearing on this motion, set for April 7, 2011, is hereby VACATED. For the reasons set forth 22 below, the Court GRANTS ICON's motion to transfer and transfers the case to the District of Utah. 23

Accordingly, the Case Management Conference set to follow the April 7, 2011 hearing is likewise VACATED.

I. Introduction and Background

Plaintiff Interactive Fitness Holdings, LLC (Interactive) filed this declaratory judgment action on October 13, 2010, seeking declaratory judgment of non-infringement of two U.S. patents, 28 number 6,447,424 ('424 Patent) and 6,808,472 ('472 Patent) (together, the Patents in Suit). See Compl. (Dkt. No. 1). The Patents in Suit are owned by ICON.*fn1 In its Complaint, Interactive notes 2 that in January, 2008, ICON sued third party Fisher Price, Inc. in the District of Utah, asserting 3 infringement of the '424 Patent.*fn2 Compl. ¶ 12; Icon Health & Fitness, Inc. v. Fisher-Price, Inc. 4 and Expresso Fitness Corp., No. 1:08-CV-10 TS (the Utah action). The Utah action is still 5 pending in the District of Utah. Id.; see Utah action, Dkt. No. 1. On June 16, 2008, ICON filed a 6 First Amended Complaint in the Utah action, adding allegations of infringement of the '424 Patent 7 against defendant Expresso Fitness Corp. (Expresso). See Utah action, Dkt. No. 10. On June 30, 8 2008, Fisher-Price settled the claims asserted against it in the Utah action, leaving Expresso as the 9 sole defendant. See Utah action, Dkt. No. 11. On September 8, 2009, ICON filed a Second 10 against Expresso. See Utah action, Dkt. No. 32. In November, 2009, Interactive purchased

Expresso's assets at a foreclosure sale. Compl. ¶ 14. Interactive expressly disclaimed any 13 assumption of Espresso's debts or liabilities. Compl. ¶ 17. Interactive continues to sell the 14 exercise cycles accused of infringing the Patents in Suit. See Opp'n at 4. 15

16 action, arguing that Interactive "is now selling the same infringing bikes that Expresso was 17 selling." See Motion to Substitute (Compl. Ex. 3). On October 13, 2010, Interactive filed the 18 instant action, citing ICON's allegations in the Utah action as evidence of the "substantial 19 controversy between the parties" and denying infringement of the Patents in Suit. Interactive did 20

ORDER TRANSFERRING CASE

Amended Complaint in the Utah action, adding allegations of infringement of the '472 Patent

On September 27, 2010, ICON moved to substitute Interactive for Expresso in the Utah not serve ICON with the Complaint until January 11, 2011. ICON filed its Motion to dismiss or 2 transfer on January 26, 2011. The District of Utah court recently denied ICON's motion to 3 substitute Interactive for Expresso based on its finding that Interactive has no successor liability to 4

II. Legal Standard

The first-to-file rule is a "generally recognized doctrine of federal comity which permits a 7 district court to decline jurisdiction over an action when a complaint involving the same parties and 8 issues has already been filed in another ...


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