Pacesetter Systems, Inc. v. Medtronic, Inc.

Decision Date24 May 1982
Docket NumberNo. 81-5136,81-5136
Citation678 F.2d 93
PartiesPACESETTER SYSTEMS, INC., Plaintiff-Appellant, v. MEDTRONIC, INC. and Med Rel Inc., Defendants-Appellees.
CourtU.S. Court of Appeals — Ninth Circuit

Jonathan J. Wilcox, Mills & Wilcox, San Francisco, Cal., for plaintiff-appellant.

Alan G. Carlson, Merchant, Gould, Smith, Edell, Welter & Schmidt, Minneapolis, Minn., argued, for defendants-appellees; Raymond A. Bogucki, Fraser & Bogucki, Los Angeles, Cal., John D. Gould, Minneapolis, Minn., on brief.

Appeal from the United States District Court for the Central District of California.

Before WALLACE, HUG and ALARCON, Circuit Judges.

HUG, Circuit Judge:

The parties to this patent infringement dispute brought essentially identical actions in district courts in Florida and California to determine the validity of patents on the design of cardiac pacemakers. The California district court, concluding that the litigation filed first in the Florida court would fully resolve the dispute, declined to exercise jurisdiction over the second-filed action and dismissed it. The sole issue in this case is whether the district judge abused his discretion in declining to exercise jurisdiction. We conclude he did not and affirm the dismissal.


The plaintiff in this action, Pacesetter Systems, Inc., ("Pacesetter") is a California corporation that designs and manufactures cardiac pacemakers and related instruments. Medtronic, Inc., a Minnesota corporation, also designs and manufactures pacemakers. It is the owner of the three patents at issue in this action. Med Rel, Inc., a Minnesota corporation that manufactures pacemakers, owns an undivided interest in two of the three challenged patents.

On Friday, November 7, 1980, Medtronic and Med Rel filed suit in the district court for the Southern District of Florida. That action alleged that Pacesetter had manufactured and sold implantable heart pacemakers that infringed patents owned by Medtronic and Med Rel. The complaint specifically alleged infringement of the United States Patent Nos. 3,391,697; 4,066,086; and Reissue No. 28,003. The plaintiffs sought injunctive relief and damages. On the day that complaint was filed, attorneys for Medtronic advised attorneys for Pacesetter that the action had been commenced.

On Monday, November 10, 1980, Pacesetter filed the instant action in the district court for the Central District of California. It sought a declaratory judgment holding United States Letters Patent Nos. 4,066,086; 3,391,697; and Reissue No. 28,003 invalid, not infringed, and unenforceable. The parties agree that the Florida infringement action and the California declaratory judgment action involve identical parties and issues.

Medtronic and Med Rel sought dismissal of the instant action. They urged the district court to decline to exercise its jurisdiction and to defer to the court in which the action was first filed. They also argued that dismissal was required because the district court lacked personal jurisdiction over Med Rel, an indispensable party. The district court granted Medtronic's motion in deference to the court in which action was first filed.

Pacesetter appealed, claiming that the district court's decision to dismiss the action was an abuse of discretion because the "balance of conveniences as between the actions" strongly favored the California action. It claimed the district court had mechanically applied the "first to file" rule, without giving consideration to the comparative convenience of the parties.


There is a generally recognized doctrine of federal comity which permits a district court to decline jurisdiction over an action when a complaint involving the same parties and issues has already been filed in another district. Church of Scientology of California v. United States Department of the Army, 611 F.2d 738, 749 (9th Cir. 1979); Great Northern Railway Co. v. National Railroad Adjustment Board, 422 F.2d 1187, 1193 (7th Cir. 1970). Normally sound judicial administration would indicate that when two identical actions are filed in courts of concurrent jurisdiction, the court which first acquired jurisdiction should try the lawsuit and no purpose would be served by proceeding with a second action. However, this "first to file" rule is not a rigid or inflexible rule to be mechanically applied, but rather is to be applied with a view to the dictates of sound judicial administration. As we stated in Church of Scientology,

(T)he "first to file" rule normally serves the purpose of promoting efficiency well and should not be disregarded lightly. Circumstances and modern judicial reality, however, may demand that we follow a different approach from time to time ....

611 F.2d at 750 (citation omitted).

The Supreme Court has emphasized that the solution of these problems involves determinations concerning "(w)ise judicial administration, giving regard to conservation of judicial resources and comprehensive disposition of litigation," and that "an ample degree of discretion, appropriate for disciplined and experienced judges, must be left to the lower courts." Kerotest Manufacturing Co. v. C-O-Two Fire Equipment Co., 342 U.S. 180, 183-84, 72 S.Ct. 219, 221, 96 L.Ed. 200 (1952). We will reverse the district court's decision applying the "first to file" rule in light of considerations of sound judicial administration only for an abuse of discretion. 1


The order of dismissal of the district court stated:

This court is not of the belief that in every instance the first filed case should be the vehicle for the trial of the action, but in this case it appears provident to grant the defendants' motion for dismissal because it is in the interest of judicial economy and convenience of the parties and it is of some significance that the Florida action has been brought by the holder of the patent against alleged infringers.

Examination of the complaints filed in these two actions indicates that the issues raised are identical. The central questions in each are the validity and enforceability of three specific patents. The same three parties are involved in both suits. 2 The two actions differ only as to the remedy sought, and we therefore conclude the first to file rule is applicable. 3

We agree with the district court that the goal of judicial efficiency would not have been served by accepting jurisdiction. Pacesetter correctly asserts that at the time Medtronic moved to dismiss the California action, neither action had proceeded past the pleading stage. However, permitting multiple litigation of these identical claims could serve no purpose of judicial administration, and the risk of conflicting determinations as to the patents' validity and enforceability was clear. No apparent bar existed to a presentation of Pacesetter's claims and defenses before the Florida court. That forum was capable of efficiently resolving all issues, and economic use of both courts' resources resulted from the California court's refusal to consider Pacesetter's claims.

Appellant refers to cases in which the patentee has been enjoined from proceeding with a first-filed action against a customer for infringement when a second action has been filed by the manufacturer against the patentee contesting the validity of the patent. See William Gluckin & Co. v. International Playtex Corp., 407 F.2d 177 (2d Cir. 1969); Formflex Foundations, Inc. v. Cupid Foundations, Inc., 383 F.Supp. 497 (S.D.N.Y.1974). The considerations of sound judicial administration are obviously different when the issues are identical but the parties are different and the parties to the second action are the major contestants. This circumstance is recognized in Kerotest, 342 U.S. at 185-86, 72 S.Ct. at 222. That situation is not present in this case because the same parties are involved in both actions.

Appellant further contends that the district court was required to give consideration to the same factors as it would under motions to transfer brought pursuant to 28 U.S.C. § 1404(a). In appropriate cases it would be relevant for the court in the second-filed action to give consideration to the convenience of the parties and witnesses. This would be particularly true in the type of cases just mentioned where the patentee and the customer are involved in one action and the patentee and the manufacturer are involved in a second action. See Gluckin, 407 F.2d at 179-180. However, normally the forum non conveniens argument should be addressed to the court in the first-filed action. Apprehension that the first court would fail to appropriately consider the convenience of the parties and the witnesses should not be a matter...

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