Chief Judge Connolly issued an interesting opinion on Friday, denying a motion to dismiss a DJ complaint in favor of an earlier-filed infringement action in the Western District of Texas.
The DJ case is the second Delaware action between these parties. After Judge Connolly found the claims in the first case invalid under § 101, the patentee brought an infringement action in Texas on a "virtually identical" continuation patent.
Although the Texas case was filed first, Judge Connolly declined to apply the first-to-file rule. He based his decision not only on judicial economy (i.e., he had already devoted substantive attention to the earlier, "virtually identical" patent), but also on the patentee's "litigation gamesmanship":
Second, SmileDirectClub' …