The opinion of the court was delivered by: Dean D. Pregerson United States District Judge
ORDER GRANTING DEFENDANT'S MOTION TO DISMISS
Presently before the court is Defendant Harris Corporation ("Harris")'s Motion to Dismiss or Transfer Venue. After reviewing the parties' moving papers and hearing oral argument, the court grants the motion and adopts the following order.
Harris, a resident of Florida, owns a patent portfolio related to "Ground Data Link," or "GDL" technology. GDL technology collects flight performance data from aircraft and transmits that information wirelessly to ground-based systems. GDL transmits flight information via an 802.11 "Wi-Fi" signal.
Plaintiff Teledyne Technologies Incorporated ("Teledyne")'s principal place of business is in California. Teledyne developed a "Wireless GroundLink," or "WGL" system, which also transmits aircraft flight information to ground-based systems. Unlike Harris's GDL system, however, the Teledyne WGL system utilizes a GSM cellular telephone network to transmit information.
Harris licences its GDL patent portfolio to other companies, including Spirent Systems Wichita, Inc. ("Spirent",) a Teledyne subsidiary. Harris has engaged in prior litigation related to its GDL patents. In 2007, Harris brought a patent infringement action against Federal Express Corporation ("FedEx") in the Middle District of Florida. That action involved three of the four patents at issue in the instant case. After the Florida court issued claim construction rulings, a jury found that FedEx had infringed Harris's valid patents. The Florida court affirmed the finding of validity and denied FedEx's motion for judgment as a matter of law on November 17, 2010.
In August 2010, Harris solicited Teledyne and suggested that Teledyne acquire a license to the GDL technology. Teledyne indicated that it was reviewing the GDL patent portfolio, and requested extensions of time in which to respond to Harris. On November 30, 2010, the parties' representatives met in person in California. Harris indicated that it was ready to take the "next step" if the parties could not reach a licensing agreement.
The parties did not reach an agreement on November 30. On December 1, Teledyne representative Robert Schaefer ("Schaefer") wrote a letter, in which he expressed the belief that the meeting "was useful in advancing the ball towards the goal line." Schaefer pledged to "address the portfolio with all deliberate speed" and "to give your requests our focused attention before we get together again." On December 3, to facilitate Teledyne's review, Harris supplied claim charts and other documentation of Teledyne's alleged infringement of the GDL patents.
Teledyne did not respond to Harris's further inquiries. Instead, on January 5, 2011, Teledyne filed this declaratory relief action. Teledyne seeks a declaratory judgment that four of Harris's GDL patents are invalid and unenforceable, and that Teledyne has not infringed those patents.*fn1 On February 3, 2011, Harris filed a patent infringement action against Teledyne in the Middle District of Florida. The Florida infringement patent concerns the same four patents at issue here, as well as two additional GDL-related patents. Harris now moves to dismiss Teledyne's first-filed declaratory judgment action or, in the alternative, to transfer to the Middle District of Florida.
Federal Circuit law controls the question whether to decline jurisdiction over a declaratory action regarding patent rights in light of a later-filed action for patent infringement. Electronics For Imaging, Inc. v. Coyle, 394 F.3d 1341, 1345 (Fed. Cir. 2005). "In a case of actual controversy . . . any court of the United States, upon the filing of an appropriate pleading, may declare the rights and other legal relations of any interested party . . . ."
28 U.S.C. § 2201(a) (emphasis added). This court enjoys "unique and substantial discretion in deciding whether to declare the rights of litigants." Wilton v. Seven Falls Co., 515 U.S. 277, 286 (1995); See also Teva Pharmaceuticals USA, Inc. v. EISAI Co., Ltd., 620 F.3d 1341, 1348-49 (Fed. Cir. 2010).
Generally, the first-filed suit has priority. Kahn v. General Motors Corp., 889 F.2d 1078, 1081 (Fed. Cir. 1989). "Exceptions, however, are not rare, and are made when justice or expediency requires, as in any issue of choice of forum." Genentech, Inc., v. Eli Lilly and Co., 998 F.2d 931, 937 (Fed. Cir. 1993). When sound reasons make it unjust or inefficient to proceed with the first-filed action, the general preference for the first-filed suit "should yield to the forum in which all interests are best served." Id. Relevant factors include the convenience and availability of witnesses, the possibility of consolidation with ...