Finisar Corporation v. Capella Photonics, Inc.

— 1 — — 2 — — 3 — 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA — 6 — 7 FINISAR CORPORATION, Case No. 20-cv-07629-EMC 8 Plaintiff, ORDER GRANTING DEFENDANT’S 9 v. MOTION TO DISMISS, AND DENYING PLAINTIFF’S MOTION 10 CAPELLA PHOTONICS, INC., FOR PRELIMINARY INJUNCTION 11 Defendant. Docket Nos. 28-29 — 12 — — 13 — 14 Plaintiff Finisar Corporation (“Finisar”) filed a complaint seeking a declaratory judgment 15 that Finisar and its customers—Tellabs, Inc. (“Tellabs”), Infinera Corp. (“Infinera”), Infinera 16 America, Inc. (“Infinera America”), Infinera Optical Networks, Inc. (“Infinera Optical”), Coriant 17 (USA), Inc. (“Coriant”), and Fujitsu Network Communications, Inc. (“Fujitsu”) (collectively, the 18 “Texas Defendants”)—have not infringed two of Defendant Capella Photonics, Inc.’s (“Capella”) 19 patents—U.S. Patent No. RE 47,905 (the “’905 Patent”) and U.S. Patent No. RE 47,906 (the “’906 20 Patent”) (collectively, the “Patents-in-Suit”)—and that Capella is not entitled to pre-issuance 21 damages for these patents. See Docket No. 1 (“Compl.”). Finisar alleges its products, and the 22 incorporation of its products by its customers, do not infringe either patent. Id. 23 Pending before the Court are (1) Finisar’s motion for a preliminary injunction pursuant to 24 Federal Rule of Civil Procedure 65; and (2) Capella’s motion to dismiss the complaint under 25 Federal Rules of Civil Procedure 12(b)(1), 12(b)(6), or in the alternative, obtain a more definite 26 statement under Federal Rule of Civil Procedure 12(e). For the following reasons, Capella’s Rule — 27 — 1 12(b)(1) motion to dismiss is GRANTED.1 All other motions are DENIED. 2 I. BACKGROUND 3 Finisar alleges as follows in the complaint. Finisar is a provider of optical subsystems and 4 components that are used to interconnect equipment to various networks. See Compl. ¶ 10. 5 Finisar’s products include a Wavelength Selective Switch (WSS) that is based on Liquid Crystal 6 on Silicon (LCoS) technology. Id. Finisar’s WSS products use the Dynamic Wavelength 7 Processor (DWP) platform, the Edge Wavelength Processor (EWP) platform, the Single Low 8 Profile (SLP) platform, or the Dual platform. Id. ¶¶ 11-12. All of these products are sold to 9 Finisar’s customers, including the Texas Defendants. Id. ¶ 12. Capella owns the Patents-in-Suit. 10 See id. ¶ 13. 11 A. Prior Litigation and Patent History 12 On February 12, 2014, Capella filed four lawsuits in the U.S. District Court for the 13 Southern District of Florida against Cisco Systems, Inc. (“Cisco”), Ciena Corp. (“Ciena”), Tellabs, 14 and Fujitsu (collectively, the “Old Defendants”), alleging they infringed U.S. Patent Nos. RE 15 42,678 (the “’678 Patent”) and RE 42,368 (the “’368 Patent”) (collectively, the “Old Patents”) 16 because they made and sold Reconfigurable Optical Add Drop Multiplexer (“ROADM”) products. 17 See Compl. ¶ 14; see also Capella Photonics, Inc. v. Cisco Systems, Inc., Case No. 1:14-cv-2052918 PAS (S.D. Fla. Feb. 12, 2014); Capella Photonics, Inc. v. Ciena Corporation, Case No. 1:14-cv19 20530-PAS (S.D. Fla. Feb. 12, 2014); Capella Photonics, Inc. v. Tellabs, Inc., Case No. 0:14-cv20 60350-PAS (S.D. Fla. Feb. 12, 2014); Capella Photonics, Inc. v. Fujitsu Network 21 Communications, Inc., 14-cv-20531-PAS (S.D. Fla. Feb. 12, 2014). All four of these lawsuits 22 were transferred to this District in July of 2014. See Compl. ¶ 14; see also Capella Photonics, Inc. 23 v. Cisco Systems, Inc., Case No. 3:14-cv-03348-EMC, Docket No. 78; Capella Photonics, Inc. v. 24 Ciena Corporation, Case No. 3:14-cv-03351-EMC, Docket No. 88; Capella Photonics, Inc. v. 25 Tellabs, Inc., Case No. 3:14-cv-03350-EMC, Docket No. 76; Capella Photonics, Inc. v. Fujitsu 26 Network Communications, Inc., Case No. 3:14-cv-03349-EMC, Docket No. 66. — 27 — 1 As alleged by Finisar, the Old Defendants instituted inter partes review (IPR) proceedings 2 challenging several of the Old Patents’ claims. See Compl. ¶¶ 15, 25. The Patent Trial and 3 Appeal Board (PTAB) found invalid claims 1-6, 9-13, and 15-22 of the ‘368 Patent and claims 14 4, 9, 10, 13, 17, 19-23, 27, 29, 44-46, 53, and 61-65 of the ‘678 Patent. Id. The Federal Circuit 5 upheld the PTAB’s decisions and Capella thereafter placed the Old Patents into reissue 6 proceedings, amending many of the underlying claims. Id. ¶¶ 16-17, 26-27.2 The U.S. Patent and 7 Trademark Office (PTO) issued a Notice of Allowance, and the modified ‘368 and ‘678 Patents 8 were reissued as the ‘905 and ‘906 Patents on March 17, 2020. Id. ¶¶ 18, 28. Finisar contends 9 that during the reissue proceedings, Capella represented that the claims of the Patents-in-Suit have 10 the same scope as the claims of the Old Patents. Id. ¶¶ 21-22, 31-32. 11 B. The Current Litigation 12 Cisco sued Capella on March 16, 2020—the day before the Patents-in-Suit issued— 13 seeking a declaratory judgment that Cisco’s products do not infringe the Patents-in-Suit. Id. ¶ 36; 14 see Cisco Sys. v. Capella Photonics, Inc., No. 20-cv-01858-EMC, Docket No. 1. The Court 15 granted Cisco’s motion for judgment on the pleadings, finding that the PTAB’s invalidation of 16 several of the Old Patents’ claims precluded Capella from recovering pre-issuance damages for 17 Cisco’s alleged infringement of “substantially identical” claims in the Patents-in-Suit. See Cisco 18 Sys. v. Capella Photonics, Inc., No. 20-cv-01858-EMC, 2020 WL 4923697 , at *6–*7 (N.D. Cal. 19 Aug. 21, 2020) (“Order on Pre-issuance Damages”). Cisco’s lawsuit is still pending before the 20 Court and the case has been related to the instant action. See Docket No. 24 (“Order Relating 21 Case”). 22 On March 16 and 17, 2020, Capella sued the Texas Defendants (collectively, the “Texas 23 Actions”), alleging infringement of the Patents-in-Suit because their products incorporate 24 ROADM technology. See Compl. ¶¶ 37-38, 40, 44; see also Exhibits 1-2 to Compl.3 Finisar sued — 25 — 2 Capella requested “input port” and “one or more other ports” be replaced with “fiber collimator — 26 — input port” and “fiber collimator one or more other ports” for the ‘368 Patent, and requested “input port” and “output port” be replaced with “fiber collimator input port” and “fiber collimator output — 27 — ports” for the ‘678 Patent. See Compl. ¶¶ 17, 27; see also Exhibit 8 to Compl. 1 Capella on October 29, 2020 seeking a declaratory judgment that Finisar, and third parties who 2 utilize Finisar products, have not and do not infringe the Patents-in-Suit and that Capella is not 3 entitled to pre-issuance damages. See Compl. ¶¶ A-I. Finisar alleges Capella’s infringement 4 contentions in the Texas Actions “make clear that the actual accused products are not the 5 identified ROADM products, but the WSSs contained in those ROADM products,” and that these 6 WSSs include Finisar’s products. See Compl. ¶ 6. In other words, Capella’s suits against the 7 Texas Defendants are suits against customers of the manufacturer of the accused product—Finisar. 8 Finisar thus contends this action should take priority over Capella’s suits against the Texas 9 Defendants under the customer-suit exception to the first-to-file rule. Id. 10 On December 10, 2020, Finisar moved for a preliminary injunction under Rule 65, seeking 11 to stay the Texas Actions until resolution of the instant suit. See Docket No. 28 (“PI Mot.”). 12 Capella moved to dismiss the complaint two weeks later under Rules 12(b)(1), 12(b)(6), or in the 13 alternative, obtain a more definite statement under Rule 12(e). See Docket No. 29 (MTD). 14 The Texas Defendants subsequently moved in the Eastern District of Texas to change 15 venue to this District and relate their cases to the instant action. That court denied both motions 16 on February 2 and 10, 2021, and issued its claim construction order construing the terms of the 17 Patents-in-Suit on February 9, 2021. See Capella Photonics, Inc. v. Infinera Corporation et al., 18 Case No. 2:20-cv-00077, Docket Nos. 99, 100; Capella Photonics, Inc. v. Fujitsu Network 19 Communications, Inc., Case No. 2:20-cv-00076, Docket Nos. 78, 81. 20 II. DISCUSSION 21 A. Defendant’s Motion to Dismiss for Lack of Subject Matter Jurisdiction 22 1. Legal Standard 23 Federal courts have authority to hear a case only if there is an actual case or controversy. 24 Raines v. Byrd, 521 U.S. 811, 818 (1997). “The threshold question for declaratory judgment 25 jurisdiction is ‘whether the facts alleged, under all the circumstances, show that there is a — 26 — — 27 — Maryland, alleging Ciena infringed the Patents-in-Suit; the action has since been transferred to this 1 substantial controversy, between parties having adverse legal interests, of sufficient immediacy 2 and reality to warrant the issuance of a declaratory judgment.’” Microsoft Corp. v. DataTern, Inc., — 3 — 755 F.3d 899, 903 (Fed. Cir. 2014) (quoting MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 , 4 127 (2007)). “A plaintiff seeking a declaratory judgment bears the burden of demonstrating that a 5 case of actual controversy existed at the time the declaratory action was filed. That requires a 6 showing of injury-in-fact, connection between the challenged conduct and the injury, and 7 redressability by the requested remedy.” AIDS Healthcare Found., Inc. v. Gilead Scis., Inc., 890 8 F.3d 986, 990 (Fed. Cir. 2018). 9 Under Rule 12(b)(1), a party may move to dismiss for lack of subject matter jurisdiction. 10 See Fed. R. Civ. P. 12(b)(1). If subject matter jurisdiction is lacking, dismissal is required. Maya 11 v. Centex Corp., 658 F.3d 1060, 1067 (9th Cir. 2011). “[E]ven if there is an actual controversy 12 and thus jurisdiction, the exercise of that jurisdiction rests within the sound discretion of the 13 district court.” Fina Research, S.A. v. Baroid Ltd., 141 F.3d 1479, 1481 (Fed. Cir. 1998). 14 2. Analysis 15 Capella contends the Court lacks subject-matter jurisdiction over Finisar’s claims because 16 Finisar “fails to allege that it has made, used or sold its WSS products in the United States, or has 17 imported the products into the United States, or otherwise done anything that could implicate U.S. 18 patent laws.” MTD at 11-12. This argument is unpersuasive. Finisar alleges that it sold WSS 19 products to the Texas Defendants. See Compl. ¶¶ 12, 38. On a motion to dismiss, the Court must 20 accept this allegation as true. See Wolfe v. Strankman, 392 F.3d 358, 362 (9th Cir. 2004). 21 Capella next argues there is no declaratory judgment jurisdiction because Finisar, as the 22 declaratory judgment plaintiff, “failed to sufficiently allege an actual controversy.” See MTD at 23 12-15.4 24 Finisar first contends it has properly alleged a live case or controversy because it purports 25 to have “indemnification obligations to the Texas Defendants relating to Capella’s claims in the — 26 — — 27 — 4 Capella also argues that even if subject matter jurisdiction exists, the Court should dismiss the 1 Texas Actions” thereby creating an “adverse legal interest with Capella.” MTD Opp’n Mot. at 32 8; Arris Grp., Inc. v. British Telecomms. PLC, 639 F.3d 1368, 1375 (Fed. Cir. 2011) (“[W]here a 3 patent holder accuses customers of direct infringement based on the sale or use of a supplier’s 4 equipment, the supplier has standing to commence a declaratory judgment action if [] the supplier 5 is obligated to indemnify its customers from infringement liability.”). 6 The existence of an indemnification obligation is subject to the pleading requirements of 7 Rule 8, which require more than mere conclusory allegations. See Ashcroft v. Iqbal, 556 U.S. 662 , 8 678-79 (2009); Levitt v. Yelp! Inc., 765 F.3d 1123, 1135 (9th Cir. 2014) (complaint must provide 9 sufficient allegations of underlying facts). Here, Finisar provided one wholly conclusory and 10 insufficient statement from the Director of Marketing of its Australian subsidiary that reads, 11 “Finisar has indemnification obligations to Tellabs, Infinera, Coriant, and Fujitsu with respect to 12 the WSS products that it supplies to those customers.” See PI Mot., Cameron Decl. Finisar does 13 not specify the source of these alleged indemnification obligations. Nor does it describe the scope 14 and nature of the indemnification obligations allegedly owed to its customers. Finisar has not 15 attached any contract laying out the details of its alleged indemnification obligations. Cf. Taco 16 Bell Corp. v. TBWA Chiat/Day Inc., 552 F.3d 1137 (9th Cir. 2009) (indemnification obligations 17 pursuant to a contractual agreement and contract was provided to the court); APL Co. Pte v. UK 18 Aerosols Ltd., 582 F.3d 947 (9th Cir. 2009) (indemnification obligations pursuant to bill of 19 lading). The allegation is too conclusory to sate a plausible claim. See Iqbal, 556 U.S. at 678-79 . 20 More importantly, Finisar’s indemnification obligations to its customers, assuming 21 arguendo they exist, would allow Finisar to sue in the Eastern District of Texas, not this Court. In 22 Microsoft, the Federal Circuit explained that where a manufacturer has an obligation to indemnify 23 its customers, it has to “stand in the shoes of the customers” in the district where the customers 24 filed suit: 25 Importantly, even if there were such an obligation—to indemnify a customer already sued by the patentee in Texas—it would not justify 26 what Appellees seek here. A case has already been filed against these customers in the Eastern District of Texas. Appellees cannot 27 seek a declaration from a New York court on behalf of customers agreeing to indemnify any one of their customers, Microsoft could 1 defend its customers and efficiently and effectively participate in the Texas action. — 2 — — 3 — 755 F.3d at 904 (emphasis added). Therefore, under Microsoft, if Finisar is required to indemnify 4 the Texas Defendants, it has standing to defend them in the Texas Actions, not to file a declaratory 5 judgment action here. 6 Second, Finisar contends that “Capella’s suits against the Texas Defendants give rise to an 7 actual controversy as to whether Finisar might be liable for direct infringement.” See MTD Opp’n 8 Mot. at 3-8. To the extent Finisar essentially is asserting it be subject to direct liability to Capella 9 independent of any indemnification obligations owed to the Texas Defendants, it fails to establish 10 a requisite concrete controversy. “[T]o establish an injury in fact traceable to the patentee, a 11 declaratory judgment plaintiff must allege both (1) an affirmative act by the patentee related to the 12 enforcement of his patent rights, and (2) meaningful preparation to conduct potentially infringing 13 activity.” Ass'n for Molecular Pathology v. United States PTO, 689 F.3d 1303, 1318 (Fed. Cir. 14 2012), aff’d in part, rev’d in part on other grounds sub nom. Ass'n for Molecular Pathology v. 15 Myriad Genetics, Inc., 569 U.S. 576 (2013). An affirmative act requires more than “a 16 communication from a patent owner to another party, merely identifying its patent and the other 17 party’s product line.” 3M Co. v. Avery Dennison Corp., 673 F.3d 1372, 1378-79 (Fed. Cir. 2012) 18 (quoting Hewlett-Packard Co. v. Acceleron LLC, 587 F.3d 1358, 1362 (Fed. Cir. 2009)). 19 Importantly, “jurisdiction generally will not arise merely on the basis that a party learns of the 20 existence of a patent owned by another or even perceives such a patent to pose a risk of 21 infringement, without some affirmative act by the patentee.” Asia Vital Components Co. v. Asetek 22 Danmark A/S, 837 F.3d 1249, 1253 (Fed. Cir. 2016) (quoting SanDisk Corp. v. 23 STMicroelectronics, Inc., 480 F.3d 1372, 1381 (Fed. Cir. 2007)). There must be “conduct that can 24 be reasonably inferred as demonstrating intent to enforce a patent.” Id. (quoting Hewlett-Packard, — 25 — 587 F.3d at 1363 ). 26 Here, Finisar fails to allege any affirmative act by Capella related to the enforcement of the 27 Patents-in-Suit against it. Instead, Finisar relies solely on Capella’s lawsuit against the Texas 1 reliance is insufficient. There is no communication from Capella indicating an intent to enforce 2 the patents against Finisar. Cf. Ass’n for Molecular Pathology, 689 F.3d 1303 (finding sufficient 3 affirmative acts where patentee sent the alleged infringer a letter demanding royalty payments); 4 Hewlett-Packard, 587 F.3d 1358 (finding sufficient affirmative acts where patentee sent two 5 letters to the alleged infringer, impliedly asserting its rights under the patents at issue); Micron 6 Tech., Inc. v. MOSAID Techs., Inc., 518 F.3d 897 (Fed. Cir. 2008) (finding sufficient affirmative 7 acts where the patentee sent four letters to the alleged infringer suggesting a licensing agreement 8 be put in place). At oral argument Capella indicated that the Patents-in-Suit expire in September 9 2021 and that it does not intend to enforce them against Finisar. See Docket No. 60 (“Hearing 10 Tr.”) at 18-19. 11 Thus, Finisar has not demonstrated a live case or controversy exists, “as distinguished from 12 an opinion advising what the law would be upon a hypothetical state of facts.” MedImmune, 549 13 U.S. at 127 (quoting Aetna Life Ins. Co. v. Haworth, 300 U.S. 227, 240-41 (1937)). Furthermore, 14 assuming arguendo jurisdiction existed, the Court declines to exercise it at this time. See Fina 15 Research, 141 F.3d at 1481 . 16 Accordingly, the Court GRANTS Capella’s Rule 12(b)(1) motion to dismiss for lack of 17 subject matter jurisdiction and DISMISSES Finisar’s complaint with leave to amend. An 18 amended complaint should provide (a) sufficient factual allegations of the existence of 19 indemnification obligations, in which case, the Court will entertain a motion to transfer venue to 20 the Eastern District of Texas; or (b) point to some act by Capella—other than the Texas Actions— 21 indicative of an intent to enforce the Patents-in-Suit directly against Finisar. 22 B. Plaintiff’s Motion for Injunctive Relief 23 Finisar moves for a preliminary injunction, seeking to stay the Texas Actions until 24 resolution of this suit. See PI Mot. Finisar argues the customer-suit exception to the first-to-file 25 rule applies and that under Federal Circuit precedent, an injunction against Capella is warranted. 26 Id. at 10-17. In the alternative, Finisar argues an injunction is warranted under the traditional four27 factor test from Winter v. Nat. Res. Def. Council, Inc., 555 U.S. 7, 20 (2008). Id. at 18-20 . 1 motion for a preliminary injunction is DENIED as moot. Even if it had jurisdiction, Finisar 2 would not be entitled to a preliminary injunction. 3 1. The Customer-Suit Exception 4 The first-to-file rule allows a district court to stay or dismiss proceedings if a similar case 5 with substantially similar issues and parties was previously filed in another district court. See 6 Kohn Law Grp., Inc. v. Auto Parts Mfg. Miss., Inc., 787 F.3d 1237, 1239 (9th Cir. 2015) (stay a 7 proceeding); Pacesetter Sys. v. Medtronic, Inc., 678 F.2d 93, 94-95 (9th Cir. 1982) (dismiss a 8 proceeding). One purpose of the rule is to promote judicial efficiency. Church of Scientology v. 9 United States Dep’t of Army, 611 F.2d 738, 750 (9th Cir. 1979), overruled on other grounds by 10 Animal Legal Def. Fund v. United States FDA, 836 F.3d 987 (9th Cir. 2016) (en banc). Another 11 purpose is to “avoid placing an unnecessary burden on the federal judiciary, and to avoid the 12 embarrassment of conflicting judgments.” Id. 13 “The general rule . . . is that ‘as a principle of sound judicial administration, the first suit 14 should have priority,’ absent special circumstances.” See Kahn v. GMC, 889 F.2d 1078 , 1081 15 (Fed. Cir. 1989) (quoting William Gluckin & Co. v. Int’l Playtex Corp., 407 F.2d 177, 178 (2d Cir. 16 1969)). However, “[w]hen a patent owner files an infringement suit against a manufacturer’s 17 customer and the manufacturer then files an action of noninfringement or patent invalidity, the suit 18 by the manufacturer generally take[s] precedence.” In re Nintendo of Am., Inc., 756 F.3d 1363 , 19 1365 (Fed. Cir. 2014). “This ‘customer-suit’ exception to the ‘first-to-file’ rule exists to avoid, if 20 possible, imposing the burdens of trial on the customer, for it is the manufacturer who is generally 21 the ‘true defendant’ in the dispute.” Id.; see also Tegic Communs. Corp. v. Bd. of Regents, 458 22 F.3d 1335, 1343 (Fed. Cir. 2006) (“[T]he guiding principles in the customer suit exception cases 23 are efficiency and judicial economy.”). In such a case, a district court may enjoin the prosecution 24 of a previously filed lawsuit in another federal forum. See Katz v. Lear Siegler, Inc., 909 F.2d 25 1459, 1464 (Fed. Cir. 1990) (“The Massachusetts court’s injunction against prosecution of the 26 Batavia action [in New York], on this basis, was within the court’s discretionary authority.”). The 27 test for determining whether to enjoin the prosecution of concurrent litigation is not the traditional 1 case would be dispositive of the other.” Id. at 1463 (the “Katz test”). However, “[w]hen an 2 injunction sought in one federal proceeding would interfere with another federal proceeding, 3 considerations of comity require more than the usual measure of restraint, and such injunctions 4 should be granted only in the most unusual cases.” Bergh v. Washington, 535 F.2d 505, 507 (9th 5 Cir. 1976). 6 Here, the Texas Actions would ordinarily have priority over this suit because they were 7 filed first. See Compl. ¶ 37. Finisar argues the customer-suit exception applies, however, because 8 “the infringement allegations against ROADMs sold by Finisar’s customers containing Finisar 9 WSSs are in fact really infringement allegations against Finisar WSSs.” PI Mot. at 14. According 10 to Finisar, it is in a better position to defend against the infringement allegations not only as the 11 manufacturer of the allegedly infringing products but because it owes the Texas Defendants 12 indemnification obligations. See id. at 16. Finisar further states that “because of the co-pending 13 declaratory judgment action brought by Cisco against Capella, which this action has been found 14 related to under L.R. 3-12, Dkt. No. 24, this Court will, in any event, take up the issues of claim 15 construction, infringement, and damages with respect to the Patents-in-Suit whether Finisar had 16 filed this suit or not.” Id. at 17. 17 Several considerations here counsel against application of the customer-suit exception 18 under the Katz test. First, resolution of this suit would not resolve the major issues in the Texas 19 Actions because there are other suppliers of WSSs and Capella’s infringement contentions are 20 much broader than just Finisar’s products—they encompass both MEMS-based WSSs (which 21 Finisar does not manufacture, see Compl. ¶¶ 11, 46) and LCoS-based WSSs. See Spread 22 Spectrum Screening LLC v. Eastman Kodak Co., 657 F.3d 1349, 1358 (Fed. Cir. 2011) (holding 23 that the customer-suit exception is applicable only where resolution of the manufacturer’s suit will 24 resolve the “major issues” in the customer suits); Katz, 909 F.2d at 1464 (same). 25 Second, enjoining the advanced-stage litigation in the Texas Actions, particularly after that 26 court issued its claim construction order, would not promote judicial economy and efficiency. See 27 Tegic Communs., 458 F.3d at 1343 (“[T]he guiding principles in the customer suit exception cases 1 Dist. LEXIS 153178, at *5-6 (N.D. Cal. Sep. 7, 2018) (recognizing the advanced stage of 2 litigation as a factor in determining whether the customer-suit exception applies). 3 Third, there are indicia of forum shopping, given that Finisar failed to intervene or join in 4 the Texas Actions even though it knew that its WSSs might be implicated as early as last summer. 5 See Kahn, 889 F.2d at 1081 (recognizing the customer-suit exception is premised on equitable 6 principles). 7 Fourth, the Texas Defendants have not agreed to be bound by decisions of this Court in the 8 event the Texas Actions are stayed. See In re Nintendo, 756 F.3d at 1365 (considering whether 9 the customers agreed to be bound by the result of the manufacturer’s suit as a factor); Kahn, 889 10 F.2d at 1082 (same). 11 Finally, Finisar alleges that it owes indemnification obligations to the Texas Defendants as 12 another justification for the customer-suit exception. See PI Mot. at 16. As previously discussed, 13 however, these alleged obligations are insufficiently pled. 14 Accordingly, the Court would decline to apply the customer-suit exception to the first-to15 file rule. 16 2. The Traditional Four-Factor Injunctive Relief Test 17 In the alternative to the Katz test, Finisar argues that it is entitled to a preliminary 18 injunction under the traditional injunction standard and cites to Finisar Corp. v. Cheetah Omni, 19 LLC, Civil Action No. 11-cv-15625, 2012 U.S. Dist. LEXIS 198501 (E.D. Mich. Nov. 19, 2012), 20 where the court granted preliminary injunctive relief under the test articulated in eBay Inc. v. 21 MercExchange, L.L.C., 547 U.S. 388 (2006). See PI Mot. at 18-20. 22 In eBay Inc. v. MercExchange, L.L.C., the Supreme Court reversed the Federal Circuit’s 23 “general rule that courts will issue permanent injunctions against patent infringement absent 24 exceptional circumstances,” in favor of the traditional four-part test for permanent injunctions 25 where a plaintiff must demonstrate: (1) that it has suffered an irreparable injury; (2) that remedies 26 available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, 27 considering the balance of hardships between the plaintiff and defendant, a remedy in equity is 1 U.S. 388 , 391 (2006). 2 In applying the eBay test, the Cheetah Omni court noted that: (1) Finisar’s customers 3 requested indemnification and that Finisar will suffer irreparable injury by being forced to 4 indemnify its customers in Texas; (2) Finisar does not have an adequate remedy at law because a 5 confrontation with its customers regarding the extent of indemnity might strain existing 6 relationships and potentially damage Finisar’s good will, reputation, and future business 7 opportunities; (3) Defendant Cheetah—by filing its counterclaims—has exhibited a willingness to 8 litigate in the Eastern District of Michigan, the Eastern District of Michigan is the venue of the 9 first filed suit, there was indicia of forum shopping, and the customer-suit exception applied; and 10 (4) the public interest will be served if Finisar is allowed to proceed in the Eastern District of 11 Michigan, and that the public interest is not impeded if Cheetah is enjoined from prosecuting its 12 claims in Texas. Id. at *13-18. In the instant case, Finisar regurgitates this reasoning—without 13 providing any additional legal authority—in support of its motion for preliminary injunctive relief. 14 See PI Mot. at 18-20. 15 Assuming arguendo the Katz test does not apply, it is the Winter test that governs 16 preliminary injunctions—not ebay. Under that test, a party must demonstrate (1) it is likely to 17 succeed on the merits, (2) it is likely to suffer irreparable harm in the absence of preliminary relief, 18 (3) that the balance of equities tips in its favor, and (4) that an injunction is in the public interest. 19 Winter, 555 U.S. at 20 . Applying these factors to the case at bar, Finisar fails to demonstrate its 20 entitlement to preliminary injunctive relief. 21 First, Finisar provides no convincing argument for its likelihood of success at permanently 22 enjoining the Texas Actions. As noted above, the first to file rule, not the customer-suit exception 23 rule, applies. 24 Second, Finisar’s argument that requiring it to indemnify its customers in Texas will cause 25 irreparable harm because its rapport with its customers will decline is not persuasive here because 26 unlike Cheetah Omni, 2012 U.S. Dist. LEXIS 198501 , at *10, there is no evidence that the 27 putative customers requested Finisar indemnify them, and Finisar has insufficiently pled its 1 Third, Finisar’s contention that the balance of hardships tips in its favor because the 2 customer-suit exception applies is without merit because, as stated above, the customer-suit 3 exception does not apply. See supra Section II.B.1. 4 Fourth, Finisar argues the public interest weighs in its favor because “‘[t]he public interest 5 in determining the rights of intellectual property rights holders is not impeded’ if Capella is 6 enjoined from prosecuting its claims against Finisar’s customers in the Texas Actions because 7 ‘those same claims will be fully adjudicated in this Court.’” See PI Mot. at 20 (quoting Cheetah 8 Omni, 2012 U.S. Dist. LEXIS 198501 , at *18). But the suit in Texas has progressed quickly; 9 enjoining that action would delay adjudication and thus not further the public interest. 10 In sum, Finisar is not entitled to a preliminary injunction under the traditional Winter test. 11 Because the customer-suit exception to the first-to-file rule does not apply either, Finisar’s motion 12 for a preliminary injunction would therefore be DENIED. 13 III. CONCLUSION 14 For the foregoing reasons, the Court GRANTS Capella’s Rule 12(b)(1) motion to dismiss 15 and DISMISSES Finisar’s complaint with leave to amend. All other motions are DENIED. 16 Finisar must file their amended complaint within thirty (30) days from the date of this order. 17 This order disposes of Docket Nos. 28 and 29. — 18 — 19 IT IS SO ORDERED. — 20 — 21 Dated: March 3, 2021 — 22 — 23 ______________________________________ EDWARD M. CHEN 24 United States District Judge — 25 — — 26 — — 27 —