United States District Court, D. Utah, Central Division
MEMORANDUM DECISION & ORDER
B. Pead United States Magistrate Judge
matter was referred to the court under 28 U.S.C. §
636(b)(1)(A). (ECF No. 8.) This matter is presently before
the court on Defendant Shure Incorporated's Motion to
Stay. (ECF No. 9.) The court initially scheduled oral
argument on this motion but, after reviewing the parties'
briefing, found it unnecessary. The court will grant
Shure's request for a stay to allow the Northern District
of Illinois an opportunity to rule on the motion to enjoin
pending before it.
regarding anticipated patent
March 10, 2017, ClearOne's counsel sent Defendants a
notice letter notifying them of a certain of ClearOne's
pending patent applications (an application that later led to
Patent Number 9, 635, 186 (the “'186 Patent”)
at issue here). (Giza Decl., Ex. 3.) The letter described
ClearOne's theory that Defendants were infringing on the
anticipated patent and included a claim chart. (Id.)
The letter demanded Defendants cease and desist from the
alleged infringement and stated, “ClearOne reserve[d]
the right to seek appropriate injunctive and other
relief.” (Id.) On March 21, 2017, Shure
responded by letter stating Shure needed time to investigate
and respond in a detailed manner. (Giza Decl., Ex. 7.)
April 5 the USPTO issued a public notice that the '186
Patent would issue on April 25. (Giza Decl., Ex. 8.) On April
10 Shure's emailed ClearOne's counsel requesting a
telephone call. (Giza Decl., Ex. 9.) On April 13
ClearOne's counsel responded requesting a time for a
telephone call on April 18 or 19. (Giza Decl., Ex. 10.) Shure
did not respond to the email or call ClearOne's counsel.
On April 17 Shure sent a letter to ClearOne's counsel
stating Shure had not infringed any patent. Shure demanded
that ClearOne refrain from contacting third parties alleging
patent infringement and otherwise acting in a manner
“intended to disrupt sales channels and other valuable
business relationships.” (Giza Decl., Ex. 11.) Similar
to ClearOne, “Shure reserve[d] all of its rights to
ensure that ClearOne discontinues these objectionable
April 25, 2017, the United States Patent and Trademark Office
issued the '186 Patent. (ECF No. 28 at 4-5.) Shure
apparently believes this occurred at 12:01 a.m.
At 12:01 a.m. EDT on April 25, 2017, Shure filed
declaratory-judgment action in Northern District of Illinois.
(ECF No. 28 at 4.) At 11:05 a.m. EDT (9:05 a.m. local time)
on April 25, 2017, ClearOne filed this lawsuit in Central
District of Utah against Shure, Biamp and QSC audio. (ECF No.
2.) Shure served its complaint on the same day ClearOne
served Shure with its complaint in this lawsuit, April 26,
2017. (See ECF Nos. 22-24, & 28 at 5.)
argues that this court should stay this case until the
Northern District of Illinois decides Shure's motion to
enjoin ClearOne from prosecuting this action in the District
contends that the matter in the Northern District of Illinois
takes precedence over this one under the first-to-file rule.
Shure asks the court to grant a stay “pending
resolution of forum[-]related issues” in a matter
pending before the Northern District of Illinois. (ECF No. 9
at 1.) Shure's reply further urges this court to
“defer consideration of forum-related disputes”
by refusing to consider exceptions to the first-to-file rule.
(ECF No. 31 at 4.) In its reply, Shure also argues the merits
of the forum dispute, but the court will not reach those
argues the court should deny the motion to stay because this
court is the proper forum under an exception to the
first-to-file rule. ClearOne makes several arguments in its
opposition about which is the proper district to hear this
case, but as previously stated, the court will not ...