Case: 4:21-cv-00072-NCC Doc. #: 27 Filed: 05/05/21 Page: 1 of 22 PageID #: 69
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF MISSOURI
`EASTERN DIVISION
`
`ZEAVISION LLC,
`
`Plaintiff,
`
`v.
`
`BAUSCH & LOMB INCORPORATED &
`PF CONSUMER HEALTHCARE 1 LLC,
`
`Defendants.
`
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`)
`)
`)
`)
`)
`)
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`)
`)
`)
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`
` Case No. 4:21-cv-00072-NCC
`
`DEFENDANTS’ MEMORANDUM IN SUPPORT OF THEIR MOTION
`TO DISMISS OR, IN THE ALTERNATIVE, TO STAY OR TRANSFER
`
`

`

`Case: 4:21-cv-00072-NCC Doc. #: 27 Filed: 05/05/21 Page: 2 of 22 PageID #: 70
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`TABLE OF CONTENTS
`
`I.
`
`II.
`
`III.
`
`INTRODUCTION .............................................................................................................. 1
`
`PRELIMINARY STATEMENT ........................................................................................ 1
`
`STATEMENT OF FACTS ................................................................................................. 3
`
`A.
`
`B.
`
`The Parties .............................................................................................................. 3
`
`The New York Action ............................................................................................. 4
`
`IV.
`
`ARGUMENT ...................................................................................................................... 5
`
`A.
`
`PLAINTIFF’S COMPLAINT SHOULD BE DISMISSED
`BECAUSE THERE IS NO PERSONAL JURISDICTION OVER
`DEFENDANTS ...................................................................................................... 5
`
`1.
`
`2.
`
`Defendants Are Not Subject to General Personal
`Jurisdiction in the Eastern District of Missouri .......................................... 7
`
`Defendants Are Not Subject to Specific Personal
`Jurisdiction in this District Under Missouri’s Long-Arm
`Statute ......................................................................................................... 7
`
`B.
`
`THE COURT SHOULD DISMISS THE COMPLAINT UNDER
`THE FIRST-TO-FILE RULE ............................................................................... 10
`
`1.
`
`2.
`
`3.
`
`This Case Substantially Overlaps with the First-Filed New
`York Action .............................................................................................. 10
`
`There Are No Compelling Circumstances That Warrant
`Departure from the First-to-File Rule ....................................................... 12
`
`In the Alternative, This Case Should Be Stayed or
`Transferred ................................................................................................ 15
`
`V.
`
`CONCLUSION ................................................................................................................. 15
`
`i
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`

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`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`AFTG-TG, LLC v. Nuvoton Tech. Corp.,
`689 F.3d 1358 (Fed. Cir. 2012)..............................................................................................6, 7
`
`Avigilon Corp. v. Canon, Inc.,
`No. 17-cv-11922, 2017 WL 11501011 (D. Mass. Nov. 13, 2017) ..........................................13
`
`Avocent Huntsville Corp. v. Aten Int’l Co.,
`552 F.3d 1324 (Fed. Cir. 2008)..........................................................................................2, 8, 9
`
`Basimah Khulusi M.D., LLC v. Honeywell Int’l, Inc.,
`No. 18-00425-DGK, 2019 WL 332416 (W.D. Mo. Jan. 25, 2019) ...........................................6
`
`Bausch & Lomb, Inc. v. ZeaVision LLC,
`C.A. No. 6:20-cv-06452 (W.D.N.Y. 2020) ..................................................................... passim
`
`Burger King Corp. v. Rudzewicz,
`471 U.S. 462 (1985) .................................................................................................................10
`
`Brillhart v. Excess Ins. Co. of Am.,
`316 U.S. 491 (1942) .................................................................................................................14
`
`Bristol-Myers Squibb Co. v. Super. Ct. of Cal., San Francisco Cty.,
`137 S. Ct. 1773 (2017) ...............................................................................................................6
`
`Clockwork Home Servs., Inc. v. Robinson,
`423 F. Supp. 2d 984 (E.D. Mo. 2006)......................................................................................13
`
`Daimler AG v. Bauman,
`571 U.S. 117 (2014) ...............................................................................................................2, 7
`
`Dairy Farmers of Am., Inc. v. Bassett & Walker Int’l, Inc.,
`702 F.3d 472 (8th Cir. 2012) .................................................................................................5, 6
`
`EMC Corp. v. Parallel Iron, LLC,
`914 F. Supp. 2d 125 (D. Mass. 2012) ...............................................................................14, 15
`
`Futurewei Techs., Inc. v. Acacia Res. Corp.,
`No. 12-cv-511, 2012 WL 12905300 (N.D. Cal. Oct. 22, 2012) ..............................................14
`
`Futurewei Techs., Inc. v. Acacia Research Corp.,
`737 F.3d 704 (Fed. Cir. 2013)..............................................................................................3, 10
`
`ii
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`

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`Genentech, Inc. v. Eli Lilly & Co.,
`998 F.2d 931 (Fed. Cir. 1993)..................................................................................................11
`
`Goodyear Dunlop Tires Operations, S.A. v. Brown,
`564 U.S. 915 (2011) ...........................................................................................................2, 6, 7
`
`Int’l Shoe Co. v. Washington,
`326 U.S. 310 (1945) ...........................................................................................................2, 6, 8
`
`Maxchief Invs. Ltd. v. Wok & Pan, Ind., Inc.,
`909 F.3d 1134 (Fed. Cir. 2018)..........................................................................................2, 6, 8
`
`Merial Ltd. v. Cipla Ltd.,
`681 F.3d 1283 (Fed. Cir. 2012)................................................................................................10
`
`Nw. Airlines, Inc. v. Am. Airlines, Inc.,
`989 F.2d 1002 (8th Cir. 1993) .............................................................................................3, 12
`
`Shure Inc. v. Clearone, Inc.,
`No. 19-cv-1343, 2020 WL 2839294 (D. Del. June 1, 2020) ...................................................12
`
`Silent Drive, Inc. v. Strong Indus., Inc.,
`326 F.3d 1194 (Fed. Cir. 2003)..................................................................................................9
`
`Silver Line Bldg. Prods. LLC v. J-Channel Indus. Corp.,
`12 F. Supp. 3d 320 (E.D.N.Y. 2014) ......................................................................................14
`
`Speedfit LLC v. Woodway USA, Inc.,
`53 F. Supp. 3d 561 (E.D.N.Y. 2014) .......................................................................................12
`
`U.S. Fire Ins. Co. v. Goodyear Tire & Rubber Co.,
`920 F.2d 487 (8th Cir. 1990) ...................................................................................................10
`
`Vermont Agency of Nat. Res. v. United States ex rel. Stevens,
`529 U.S. 765 (2000) ...................................................................................................................5
`
`Wells Dairy, Inc. v. Food Movers Int’l, Inc.,
`607 F.3d 515 (8th Cir. 2010) .....................................................................................................5
`
`Z-Line Designs, Inc. v. Bell’O Int’l LLC,
`218 F.R.D. 663 (N.D. Cal. 2003) .............................................................................................14
`
`Statutes
`
`28 U.S.C. § 1404 ............................................................................................................................14
`
`Lanham Act ............................................................................................................................ passim
`
`Missouri Unfair Competition Law .........................................................................................1, 4, 11
`
`iii
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`

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`MO. REV. STAT. § 506.500 (2016) ...................................................................................................7
`
`New York Unfair Competition Law ......................................................................................1, 4, 11
`
`Other Authorities
`
`Fed. R. Civ. P. 12(b)(2)......................................................................................................1, 2, 5, 15
`
`Fed. R. Civ. P. 15(a)(1)(B) ............................................................................................................12
`
`Fed. R. Civ. P. 15(c)(1)(B) ............................................................................................................12
`
`iv
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`

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`Case: 4:21-cv-00072-NCC Doc. #: 27 Filed: 05/05/21 Page: 6 of 22 PageID #: 74
`
`I.
`
`INTRODUCTION
`
`Defendants Bausch & Lomb Incorporated and PF Consumer Healthcare 1 LLC
`
`(collectively, “Defendants”) respectfully submit this memorandum in support of their motion to:
`
`(1) dismiss Plaintiff ZeaVision LLC’s (“Plaintiff” or “ZeaVision”) Complaint in its entirety
`
`pursuant to Fed. R. Civ. P. 12(b)(2) for lack of personal jurisdiction or under the first-to-file rule
`
`based on an earlier-filed pending litigation involving the same parties and subject matter, or,
`
`alternatively, (2) stay this action pending resolution of the first-filed action or transfer this action.
`
`II.
`
`PRELIMINARY STATEMENT
`
`On January 19, 2021, Plaintiff filed its Complaint for declaratory judgment against
`
`Defendants. Electronic Case File (“ECF”) No. 1. The Complaint seeks declarations that
`
`ZeaVision’s products, including its EyePromise® AREDS 2 Plus Multi-Vitamin product, do not
`
`infringe any claim of U.S. Patent Nos. 6,660,297 (the “’297 Patent”) and 8,603,522 (the “’522
`
`Patent”) (collectively, the “Patents-in-Suit”), and also seeks a declaration that the labeling and
`
`marketing claims of ZeaVision’s products are not in violation of the Lanham Act, Missouri Unfair
`
`Competition Law, or New York Unfair Competition Law.
`
`Almost seven months before Plaintiff filed this action, Defendants filed suit against
`
`ZeaVision in the Western District of New York for infringement of the Patents-in-Suit. See Ex.
`
`A, Bausch & Lomb Inc. v. ZeaVision LLC, C.A. No. 6:20-cv-06452 (W.D.N.Y. 2020) (the “New
`
`York Action”), at ECF No. 1. This case and the New York Action are mirror images of one
`
`another—they involve the same parties, patents, accused product, and accused conduct. The
`
`Complaint here is a transparently improper attempt to preempt Defendants’ prior lawsuit that has
`
`been pending for nearly one year and to deprive Defendants who, as patentees, are the true
`
`1
`
`

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`plaintiffs, from their choice of forum. This case should be dismissed in its entirety, or,
`
`alternatively, stayed or transferred for several reasons.
`
`First, the Court should dismiss this case pursuant to Rule 12(b)(2) because it does not have
`
`general or specific personal jurisdiction over Defendants. Defendants are not subject to general
`
`personal jurisdiction in this Court because neither Defendant is incorporated here, has a principal
`
`place of business here, nor has contacts so continuous and systematic as to render either to be
`
`“fairly regarded as at home” in Missouri. See Daimler AG v. Bauman, 571 U.S. 117, 137 (2014)
`
`(quoting Goodyear Dunlop Tires Operations., S.A. v. Brown, 564 U.S. 915, 924 (2011)).
`
`Defendants are not subject to specific personal jurisdiction because they do not have
`
`sufficient contacts with the forum that relate in some material way to the enforcement of the
`
`Patents-in-Suit. Due process requires plaintiffs to demonstrate that a defendant has certain
`
`“minimum contacts” with the forum such that the maintenance of the suit “does not offend
`
`traditional notions of fair play and substantial justice.” Avocent Huntsville Corp. v. Aten Int’l Co.,
`
`552 F.3d 1324, 1329 (Fed. Cir. 2008) (citing Int'l Shoe Co. v. Washington, 326 U.S. 310, 316
`
`(1945)). The minimum contacts inquiry involves two related requirements—first, the defendant
`
`must have purposefully directed its conduct at the forum state, and second, the claim must “arise
`
`out of or relate to the defendant’s contacts with the forum.” Maxchief Invs. Ltd. v. Wok & Pan,
`
`Ind., Inc., 909 F.3d 1134, 1138 (Fed. Cir. 2018) (citations omitted). Declaratory judgment claims,
`
`such as those here, arise out of patentee’s contacts with the forum state only if those contacts
`
`“relate in some material way to the enforcement or the defense of the patent.” Id. (quoting Avocent,
`
`552 F.3d at 1336). ZeaVision has not and cannot demonstrate that either Defendant has taken any
`
`action directed toward this forum that relates to the enforcement of the Patents-in-Suit.
`
`Second, the Court should dismiss this case under the first-to-file rule. The Federal Circuit
`
`2
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`

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`has explicitly held that under circumstances such as those presented here, where two actions that
`
`sufficiently overlap are filed in different federal district courts, one for infringement and the other
`
`for declaratory relief, the declaratory judgment action, if filed later, generally is to be stayed,
`
`dismissed, or transferred to the forum of the infringement action. Futurewei Techs., Inc. v. Acacia
`
`Research Corp., 737 F.3d 704, 708 (Fed. Cir. 2013). Defendants filed the New York Action almost
`
`seven months before Plaintiff filed this action. There can be no dispute that this case and the New
`
`York Action substantially overlap. Each requires the Court(s) to adjudicate whether ZeaVision’s
`
`EyePromise® AREDS 2 Product infringes the claims of the Patents-in-Suit and whether certain
`
`marketing statements by ZeaVision amount to false advertising.
`
`Moreover, there are no compelling circumstances to warrant departure from the first-to-
`
`file rule. See Nw. Airlines, Inc. v. Am. Airlines, Inc., 989 F.2d 1002, 1006 (8th Cir. 1993). Since
`
`Defendants, as patentees, are the true plaintiffs in this dispute, it is in the interest of justice to allow
`
`the New York Action to proceed because it is the Defendants’ choice of forum. Moreover,
`
`proceeding in the New York Action is more efficient because it includes the primary infringement
`
`claims and because the case is procedurally ahead of this one, with briefing nearly complete on
`
`ZeaVision’s motion to dismiss or transfer.
`
`III.
`
`STATEMENT OF FACTS
`
`A.
`
` The Parties
`
`Bausch & Lomb markets and sells products embodying the inventions described in the
`
`Patents-in-Suit, including but not limited to its PreserVision® AREDS and AREDS 2 Formula
`
`products, with notice to the public that such products are patented. See BAUSCH & LOMB
`
`PRESERVISION®, https://www.preservision.com/ (last visited May 5, 2021). ZeaVision markets
`
`3
`
`

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`and sells eye health vitamins under the brand name EyePromise®. See EYEPROMISE® VISION
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`SUPPLEMENTS, https://www.eyepromise.com/ (last visited May 5, 2021).
`
`Defendant Bausch & Lomb is a New York corporation with a place of business in
`
`Rochester, New York. ECF No. 1 at ¶ 2.1 Defendant PF Consumer Healthcare 1 is a Delaware
`
`LLC with a place of business in Wilmington, Delaware. ECF No. 1 at ¶ 3. ZeaVision is also a
`
`Delaware LLC with a principal place of business in Chesterfield, Missouri. ECF No. 1 at ¶ 1.
`
`B.
`
` The New York Action
`
`On June 30, 2020, Defendants filed a complaint against ZeaVision in the Western District
`
`of New York asserting infringement of the Patents-in-Suit. See Ex. A, Bausch & Lomb Inc. v.
`
`ZeaVision LLC, C.A. No. 6:20-cv-06452 (W.D.N.Y. 2020), at ECF No. 1. For several months,
`
`the parties had numerous discussions to amicably resolve the dispute. Ex. B, Declaration of Steven
`
`C. Kline (“Kline Decl.”) at ¶ 4. During that time, Defendants agreed five times to extend the time
`
`for ZeaVision to respond to the complaint. Id. at ¶ 5. On January 19, 2021, ZeaVision moved to
`
`dismiss the complaint for improper venue. Bausch & Lomb, Inc. v. ZeaVision LLC, C.A. No. 6:20-
`
`cv-06452 (W.D.N.Y. 2020), at ECF No. 16. On that same day, ZeaVision filed its Complaint for
`
`declaratory judgment in this case. ECF No. 1.
`
`While Defendants’ initial complaint in the New York Action only included claims for
`
`patent infringement, ZeaVision’s Complaint here sought a declaration that the labeling and
`
`marketing claims of ZeaVision’s products are not in violation of the Lanham Act, Missouri Unfair
`
`Competition Law, or New York Unfair Competition Law. Therefore, in view of the declaratory
`
`judgment complaint, Defendants filed an amended complaint in the New York Action, which
`
`1 Bausch & Lomb is a wholly-owned subsidiary of Bausch Health Americas, Inc., which is a
`Delaware corporation.
`
`4
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`

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`added a count for false advertising and/or unfair competition in violation of the Lanham Act. See
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`Ex. C, Bausch & Lomb Inc. v. ZeaVision LLC, C.A. No. 6:20-cv-06452 (W.D.N.Y. 2020), at ECF
`
`No. 20; Kline Decl. at ¶ 7. With the parties’ consent, the Western District of New York terminated
`
`ZeaVision’s January 19, 2021 motion to dismiss as moot in light of the first amended complaint.
`
`Kline Decl. at ¶ 8. On February 22, 2021, ZeaVision filed a second motion to dismiss or,
`
`alternatively, to transfer the New York Action to the Eastern District of Missouri. Bausch & Lomb
`
`Inc. v. ZeaVision LLC, C.A. No. 6:20-cv-06452 (W.D.N.Y. 2020), at ECF No. 21. On April 20,
`
`2021, Defendants filed their response to ZeaVision’s motion, requesting that the Court transfer the
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`case to the District of Delaware, where venue is unquestionably proper as to ZeaVision and where
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`another case involving the Patents-in-Suit is currently pending between Defendants and another
`
`party. Id. at ECF No. 24. ZeaVision’s reply in support of its second motion to dismiss or transfer
`
`in the New York Action is due on May 11.
`
`IV.
`
`ARGUMENT
`
`A. PLAINTIFF’S COMPLAINT SHOULD BE DISMISSED BECAUSE THERE IS
`NO PERSONAL JURISDICTION OVER DEFENDANTS
`
`In order for an action to properly lie in a federal district court, personal jurisdiction over a
`
`defendant must exist. See Vermont Agency of Nat. Res. v. United States ex rel. Stevens, 529 U.S.
`
`765, 778 (2000). Here, the Court should dismiss this case pursuant to Rule 12(b)(2) because it
`
`does not have personal jurisdiction over Defendants.
`
`“To allege personal jurisdiction, a plaintiff must state sufficient facts in the complaint to
`
`support a reasonable inference that the defendant can be subjected to jurisdiction within the state.”
`
`Wells Dairy, Inc. v. Food Movers Int'l, Inc., 607 F.3d 515, 518 (8th Cir. 2010) (internal quotations
`
`omitted). When a defendant challenges the exercise of personal jurisdiction under Rule 12(b)(2),
`
`the plaintiff must show that it has made a prima facie case supporting personal jurisdiction. Dairy
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`5
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`

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`Farmers of Am., Inc. v. Bassett & Walker Int’l, Inc., 702 F.3d 472, 475 (8th Cir. 2012). Conclusory
`
`allegations are not enough to establish personal jurisdiction—the proof “must be tested, not by the
`
`pleadings alone, but by the affidavits and exhibits.” Id.
`
`Personal jurisdiction can be specific or general. AFTG-TG, LLC v. Nuvoton Tech. Corp.,
`
`689 F.3d 1358, 1360 (Fed. Cir. 2012). But regardless of which is asserted, the primary focus is
`
`the defendant’s relationship to the forum. See Basimah Khulusi M.D., LLC v. Honeywell Int’l,
`
`Inc., C.A. No. 18-00425-DGK, 2019 WL 332416, at *1 (W.D. Mo. Jan. 25, 2019) (citing Bristol-
`
`Myers Squibb Co. v. Super. Ct. of Cal., San Francisco Cty., 137 S. Ct. 1773, 1779 (2017)).
`
`General jurisdiction over a foreign corporation exists only when a corporation’s affiliations
`
`with the state in which suit is brought are so constant and pervasive “as to render [it] essentially at
`
`home in the forum State.” Goodyear, 564 U.S. at 919. Specific personal jurisdiction must comport
`
`with the forum state’s long-arm statute and with due process under the U.S. Constitution.
`
`Maxchief, 909 F.3d at 1137. Due process requires a defendant to have “certain minimum contacts
`
`with [the forum] such that the maintenance of the suit does not offend ‘traditional notions of fair
`
`play and substantial justice.’” Int’l Shoe, 326 U.S. at 316 (citations omitted).
`
`In order for this case to proceed in this Court, Plaintiff must establish that personal
`
`jurisdiction exists over Defendants in Missouri in this case. Here, ZeaVision does not clearly
`
`allege whether Defendants are subject to general or specific personal jurisdiction. See ECF No. 1
`
`at ¶ 8 (“On information and belief, this Court has personal jurisdiction over Defendants because
`
`Defendants have constitutionally sufficient contacts with this judicial District as to make personal
`
`jurisdiction proper in this Court.”). But for the reasons explained below, regardless of the basis,
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`personal jurisdiction does not lie.
`
`6
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`

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`1. Defendants Are Not Subject to General Personal Jurisdiction in the
`Eastern District of Missouri
`
`A corporation is only subject to general jurisdiction where it is “fairly regarded as at home.”
`
`See Daimler, 571 U.S. at 137 (quoting Goodyear, 564 U.S. at 924). The Supreme Court in Daimler
`
`explained that a corporation’s place of incorporation and its principal place of business are the
`
`paradigm bases for general jurisdiction. Id. There, the Supreme Court held that the presence of
`
`Mercedes-Benz USA LLC’s (a Daimler subsidiary) multiple offices, the direct distribution of
`
`thousands of products accounting for billions of dollars in sales, and the continuous interactions
`
`with customers in the forum were not enough to support the exercise of general jurisdiction over
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`Daimler. Id. at 143.
`
`In its Complaint, Plaintiff admits that neither Defendant is incorporated in or has a principal
`
`place of business in Missouri, but rather concedes that Defendant Bausch & Lomb is a New York
`
`Corporation with a principal place of business in Rochester, New York and Defendant PF
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`Consumer Healthcare 1 LLC is a Delaware LLC with a principal place of business in Wilmington,
`
`Delaware. See ECF No. 1 at ¶¶ 2–3. Nor does Plaintiff allege any facts sufficient to establish that
`
`either Defendant’s affiliations are “so constant and pervasive” to “render [it] essentially at home”
`
`in Missouri. Goodyear, 564 U.S. at 924. Therefore, this Court lacks general personal jurisdiction
`
`over both of the Defendants.
`
`2. Defendants Are Not Subject to Specific Personal Jurisdiction in this
`District Under Missouri’s Long-Arm Statute
`
`Specific personal jurisdiction exists if a party is subject to jurisdiction under Missouri’s
`
`long-arm statute. Since the Missouri long-arm statute authorizes the exercise of jurisdiction over
`
`nonresidents to the extent permissible under the due process clause, MO. REV. STAT. § 506.500
`
`(2016), the jurisdictional analysis collapses into a single determination of whether the exercise of
`
`personal jurisdiction comports with due process. AFTG-TG, 689 F.3d at 1360. Due process
`
`7
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`

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`Case: 4:21-cv-00072-NCC Doc. #: 27 Filed: 05/05/21 Page: 13 of 22 PageID #: 81
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`requires plaintiffs to demonstrate that a defendant has certain “minimum contacts” with the forum
`
`such that the maintenance of the suit “does not offend traditional notions of fair play and substantial
`
`justice.” Avocent, 552 F.3d at 1329 (citing Int'l Shoe, 326 U.S. at 316).
`
`Sufficient contacts exist when “the defendant purposefully avails itself of the privilege of
`
`conducting activities within the forum State, thus invoking the benefits and protections of its laws.”
`
`Id. (citations omitted). The minimum contacts inquiry involves two related requirements—first,
`
`the defendant must have purposefully directed its conduct at the forum state, and second, the claim
`
`must “arise out of or relate to the defendant’s contacts with the forum.” Maxchief, 909 F.3d at
`
`1138 (citations omitted).
`
`Declaratory judgment claims, such as those here, arise out of patentee’s contacts with the
`
`forum state only if those contacts “relate in some material way to the enforcement or the defense
`
`of the patent.” Id. (quoting Avocent, 552 F.3d at 1336). Thus, to meet the minimum contacts
`
`requirement in the context of this declaratory judgment action, Plaintiff needs to show some
`
`enforcement activity by Defendants in this District. Plaintiff has not made and cannot make such
`
`a showing.
`
`As the Federal Circuit explained in Avocent, the claim asserted by the plaintiff patentee in
`
`an ordinary patent infringement suit is some act of making, using, or selling an allegedly infringing
`
`product. 552 F.3d at 1332. Thus, for purposes of specific jurisdiction, the inquiry is easily
`
`discerned from the extent of the commercialization of the accused products by the defendant in the
`
`forum. Id. But in the context of a declaratory judgment action, the patentee is the defendant, and
`
`the claim asserted relates to the wrongful restraint by the patentee on the commercialization of
`
`non-infringing goods, such as the threat of an infringement suit. Id. Such a claim neither arises
`
`out of nor relates to the making, using, or selling of products in the forum, “but instead arises out
`
`8
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`

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`Case: 4:21-cv-00072-NCC Doc. #: 27 Filed: 05/05/21 Page: 14 of 22 PageID #: 82
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`of or relates to the activities of the defendant patentee in enforcing the patent or patents in suit.”
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`Id. Accordingly, the relevant inquiry for specific personal jurisdiction purposes, in a declaratory
`
`judgment action, is to what extent the defendant purposefully directed enforcement activities at
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`residents of the forum, and the extent to which the declaratory judgment claim “arises out of or
`
`relates to those activities.” Id. (citations omitted).
`
`On more than one occasion, the Federal Circuit has held that a letter threatening
`
`infringement sent by the patentee to a person located in the forum is not sufficient to confer
`
`personal jurisdiction over the patentee. Id. at 1333; see also Silent Drive, Inc. v. Strong Indus.,
`
`Inc., 326 F.3d 1194, 1202 (Fed. Cir. 2003) (explaining that due to policy considerations in the
`
`patent context, allowing infringement letters to confer personal jurisdiction would not comport
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`with fair play and substantial justice). Indeed, “[f]or the exercise of personal jurisdiction to
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`comport with fair play and substantial justice, there must be ‘other activities’ directed at the forum
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`and related to the cause of action besides the letters threatening an infringement suit.” Silent Drive,
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`326 F.3d at 1202.
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`Here, Plaintiff has not alleged any activities directed at the forum and related to the cause
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`of action that could confer specific personal jurisdiction over Defendants in a declaratory judgment
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`action. The only activity by Defendants involving the enforcement of the Patents-in-Suit related
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`to this cause of action was the filing and maintenance of the New York Action. However,
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`Defendants’ enforcement activities in New York cannot subject them to specific personal
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`jurisdiction in the Eastern District of Missouri. See Avocent, 552 F.3d at 1339 (“We are aware of
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`no precedent that holds that the filing of a suit in a particular state subjects that party to specific
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`jurisdiction everywhere else.”). Thus, since Plaintiff has not demonstrated the requisite minimum
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`contacts by either Bausch & Lomb or PF Consumer Healthcare 1 LLC, the specific personal
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`9
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`Case: 4:21-cv-00072-NCC Doc. #: 27 Filed: 05/05/21 Page: 15 of 22 PageID #: 83
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`jurisdiction analysis ends. See Burger King Corp. v. Rudzewicz, 471 U.S. 462, 476 (1985) (holding
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`that only once it has been decided that a defendant has minimum contacts within the forum state
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`should those contacts “be considered in light of other factors to determine whether the assertion of
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`personal jurisdiction would comport with ‘fair play and substantial justice’” (citations omitted)).
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`B. THE COURT SHOULD DISMISS THE COMPLAINT UNDER THE FIRST-
`TO-FILE RULE
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`This case should also be dismissed under the first-to-file rule because: (1) the New York
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`Action was filed almost seven months before this case, (2) the two cases substantially overlap—
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`they involve the same parties, patents, products, and legal and factual issues, and (3) no exception
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`to the first-to-file rule applies.
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`1. This Case Substantially Overlaps with the First-Filed New York Action
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`The first-to-file rule is a doctrine of federal comity “intended to avoid conflicting decisions
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`and promote judicial efficiency, that generally favors pursuing only the first-filed action when
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`multiple lawsuits involving the same claims are filed in different jurisdictions.” Merial Ltd. v.
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`Cipla Ltd., 681 F.3d 1283, 1299 (Fed. Cir. 2012). The prevailing standard applied by courts in
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`this Circuit is that “in the absence of compelling circumstances,” the first-filed rule should apply.
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`See U.S. Fire Ins. Co. v. Goodyear Tire & Rubber Co., 920 F.2d 487, 488–89 (8th Cir. 1990).
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`Case law of the Federal Circuit governs the first-to-file rule in patent cases. See Futurewei,
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`737 F.3d at 708. The Federal Circuit has explicitly held that under circumstances such as those
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`presented here, where two actions that sufficiently overlap are filed in different federal district
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`courts, one for infringement and the other for declaratory relief, the declaratory judgment action,
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`if filed later, generally is to be stayed, dismissed, or transferred to the forum of the infringement
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`action. Id. Generally, “the forum of the first-filed case is favored, unless considerations of judicial
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`and litigant economy, and the just and effective disposition of disputes, require otherwise.”
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`10
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`Case: 4:21-cv-00072-NCC Doc. #: 27 Filed: 05/05/21 Page: 16 of 22 PageID #: 84
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`Genentech, Inc. v. Eli Lilly & Co., 998 F.2d 931, 937 (Fed. Cir. 1993). To justify deviating from
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`the preference normally accorded the earlier-filed action, there must “be sound reason that would
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`make it unjust or inefficient to continue the first-filed action.” Id. at 938.
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`There is no dispute that Defendants filed the New York Action on June 30, 2020, almost
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`seven months before Plaintiff filed this declaratory judgment action. In fact, Plaintiff’s Complaint
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`here admits that “[o]n June 30, 2020, Defendants filed 11 different patent infringement lawsuits in
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`the Western District of New York” and “the lawsuit caught ZeaVision by surprise.” ECF No. 1 at
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`¶¶ 11–12. There can also be no dispute that this case and the New York Action substantially
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`overlap. Indeed, this case and the New York Action are mirror images of one another—the parties,
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`patents, accused product, and accused conduct in the two cases are identical. Moreover, Plaintiff
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`admits that the New York Action involves claims for patent infringement of the same patents at
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`issue in this case. See id. at ¶ 12 (“[i]n their lawsuit against ZeaVision (C.A. No. 20-cv-6452),
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`Defendants alleged that at least ZeaVision’s AREDS2 Plus Multi-Vitamin product was infringing
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`the ’297 Patent and the ’522 Patent.”). Two of the three claims in Plaintiff’s Complaint seek
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`declarations that its products2 do not infringe the very same patents asserted by Defendants in the
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`New York Action. Id. at ¶¶ 27–36. And ZeaVision’s third claim for relief, which seeks a
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`declaration that the labeling and marketing claims of its products are not in violation of the Lanham
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`Act, Missouri Unfair Competition Law, or New York Unfair Competition Law, directly overlaps
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`with Defendants’ claim in the New York Action for false advertising and/or unfair competition in
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`violation of the Lanham Act. Ex. C, Bausch & Lomb, Inc. v. ZeaVision LLC, C.A. No. 6:20-cv-
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`2 While Plaintiff’s claims for relief broadly refer