United States District Court, D. Oregon
KOKUSAI SEMICNDUCTOR EQUIPMENT CORP., a Delaware Corporation, and KABUSHIKI-KAISHA KOKUSAI ELECTRIC, Plaintiffs,
ASM INTERNATIONAL, N.V., a Netherlands corporation, and ASM AMERICA, INC., a Delaware corporation, Defendants.
Michael H. Simon United States District Judge.
States Magistrate Judge John V. Acosta issued Findings and
Recommendation in this case on January 25, 2019. ECF 61.
Judge Acosta recommended that Defendants' Motion to
Dismiss, Stay or Transfer Venue (ECF 19) be denied.
the Federal Magistrates Act (“Act”), the Court
may “accept, reject, or modify, in whole or in part,
the findings or recommendations made by the
magistrate.” 28 U.S.C. § 636(b)(1). If a party
files objections to a magistrate judge's findings and
recommendations, “the court shall make a de novo
determination of those portions of the report or specified
proposed findings or recommendations to which objection is
made.” Id.; Fed.R.Civ.P. 72(b)(3).
those portions of a magistrate judge's findings and
recommendations to which neither party has objected, the Act
does not prescribe any standard of review. See Thomas v.
Arn, 474 U.S. 140, 152 (1985) (“There is no
indication that Congress, in enacting [the Act], intended to
require a district judge to review a magistrate's report
to which no objections are filed.”); United States.
v. Reyna-Tapia, 328 F.3d 1114, 1121 (9th Cir. 2003) (en
banc) (holding that the court must review de novo
magistrate judge's findings and recommendations if
objection is made, “but not otherwise”). Although
in the absence of objections no review is required, the Act
“does not preclude further review by the district
judge sua sponte . . . under a de novo or
any other standard.” Thomas, 474 U.S. at 154.
Indeed, the Advisory Committee Notes to Fed.R.Civ.P. 72(b)
recommend that “[w]hen no timely objection is filed,
” the Court review the magistrate judge's
recommendations for “clear error on the face of the
timely filed an objection (ECF 63), to which Plaintiffs
responded. ECF 64. Defendants object to the portion of Judge
Acosta's recommendation finding that (1) the issues in
the first-filed suit were not substantially similar under the
first-to-file rule; (2) failing to apply the transaction or
occurrence test in determining whether this case was barred
under the claim splitting doctrine; and (3) giving undue
weight to Plaintiffs' choice of forum.
Court has considered Judge Acosta's thorough and
well-reasoned opinion, as well as Defendants' objections
and Plaintiffs' responses. The Court agrees with the
analysis and recommended disposition in the Findings and
Recommendation. It is undisputed that the Oregon lawsuit
involves different patents and different technologies than
those implicated in the California lawsuit. Even though the
Accused Products are the same in both actions, the Accused
Products are highly complex and involve multiple different
technologies and the California lawsuit and the Oregon
lawsuit involve different patents, different claim terms, and
different claim elements. Additionally, because none of the
patent claims in the California case have reached the claim
construction phase, the Court does not have enough facts to
conclude that the patents at issue here present sufficiently
similar causes of action. The Court agrees with Judge
Acosta's conclusion that ASM has failed to demonstrate
that the accused products, processes, and patents in the
Oregon lawsuit are essentially the same as those in the
Court also agrees with Judge Acosta's finding that
Plaintiffs' choice of forum is the District of Oregon
because Plaintiffs filed this lawsuit in the District of
Oregon and this lawsuit, involving these patents, has not
previously been filed in any other district. This choice is
given deference when analyzing a motion to transfer venue
under 28 U.S.C. § 1404. The Court agrees with Judge
Acosta's analysis and concludes that the Jones
factors weigh against transfer. See Jones v. GNC
Franchising, Inc., 211 F.3d 495, 499 (9th Cir. 2000).
the Court finds that Defendants' notice of subsequent
events (ECF 69) is not probative of the underlying Motion to
Dismiss, Stay, or Transfer Venue. Although the Court
concludes that the two actions are not sufficiently similar
to require a dismissal or a stay of this lawsuit, the Court
recognizes that there are many areas of similarity and
overlap between the two lawsuits. Thus, it is appropriate
that requests for production filed in the Oregon lawsuit and
the California lawsuit, including discovery motions relating
to the Accused Products, would bear some similarities. The
discovery requests that Defendants draw the Court's
attention to do not undermine the conclusion of the Findings
Court ADOPTS Judge Acosta's Findings and Recommendation
(ECF 61). Defendants' Motion to Dismiss, Stay, or
Transfer Venue (ECF 19) is DENIED.