United States District Court, E.D. Texas, Marshall Division
PAYNE UNITED STATES MAGISTRATE JUDGE
Supercell Oy filed this motion to transfer this action and
two others (collectively, “Texas Actions”) from
this District to the Northern District of California, or
alternatively, to dismiss or stay the Texas Actions. (Dkt.
argues that the Texas Actions should be transferred to the
N.D.Cal. for two reasons. First, Supercell argues that
Plaintiff GREE, Inc. breached a Confidential Settlement
Agreement (Dkt. No. 26-4) between the parties with the proper
remedy being transfer. Second, Supercell argues that an
analysis under 28 U.S.C. § 1404(a) dictates transfer.
has already presented many of these same arguments to the
Court in the N.D.Cal.., prompting that Court to note that
“principles of comity among federal courts and judicial
efficiency weigh heavily in favor of resolving all of the
parties' disputes in Texas.” Supercell OY v.
GREE, Inc., No. 3:19-CV-01106, Dkt. 32 (N.D. Cal. May
31, 2019). This Court agrees with that conclusion.
is a mobile game development company founded in 2010 and
headquartered in Finland. (Dkt. No. 26, at 5-6). Supercell
releases mobile games and distributes its games
internationally and throughout the United States, including
Texas. (Id., at 6).
a social media company that provides mobile content and
services, including games, entertainment, media, advertising,
and investment services. It was founded in 2004 and is based
in Japan. (Dkt. No. 1, at 3).
2017, GREE and Supercell commenced patent infringement
litigations and patent office proceedings in Japan, China,
and the United States against each other. In Japan, GREE
filed actions against Supercell and Supercell filed actions
against GREE. In China, Supercell filed actions against GREE
and GREE filed invalidity contentions against Supercell. In
the United States, Supercell filed an action against GREE in
the the N.D.Cal., entitled Supercell Oy v. GREE Inc.,
GREE International Entertainment, Inc., and Funzio Games,
Inc., No. 3:17-cv-5556. In addition, Supercell filed
Post-Grant Reviews against some of GREE's patents, which
are currently on appeal before the Federal Circuit. (Dkt. No.
26-4, at 2).
February 7, 2019, the parties entered a Settlement Agreement
in order to resolve the Japanese actions, dismiss the Chinese
actions and U.S. action, and effect a standstill agreement
with respect to those actions and any further litigation or
claims between the parties. A resolution of the Post-Grant
Reviews was not provided for in the Agreement.
Settlement Agreement included a licensing clause, but only as
to GREE's Japanese patents and applications, expressly
excluding “all non-Japanese patents and patent
applications” including the patents at issue in the
Texas Actions. (Id., at 3).
Settlement Agreement also had a standstill provision, which
provided in part that the parties would not “commence .
. . any patent litigation action or proceeding . . . against
the other Party . . . until February 28, 2019”
(“Standstill Period”). (Id., at 10).
Within the same standstill clause, each party agreed to
“[d]uring the Standstill Period . . . notify the other
[Party] promptly in writing of any patent infringement claims
. . . of which it becomes aware.” (Id., at
“6.1 Each Party . . . irrevocably covenants that it . .
. will not commence, maintain, or prosecute any patent
litigation action or proceeding, including, but not limited
to, any action alleging infringement by or seeking a
declaratory judgment of invalidity, non-infringement or
unenforceability, against the other . . . anywhere in the
world from the Effective Date until February 28, 2019 . . .
During the Standstill Period, each Party agrees to notify the
other promptly in writing of any patent infringement claims .
. . of which it becomes aware.”
parties included a choice of law clause in the Settlement
Agreement, agreeing that the “Agreement and all related
documents, and all matters arising out of or relating to this
Agreement” are governed by California law. Furthermore,
the parties agreed that “sole jurisdiction and venue
for any action for breach of or to enforce this agreement
shall be” the N.D.Cal.. (Id., at 13).
8.5 Governing Law; Submission to Jurisdiction. This Agreement
and all related documents, and all matters arising out of or
relating to this Agreement, are governed by, and construed in
accordance with, the laws of the State of California, United
States of America (including California choice of law
statutes), without regard to the conflict of laws provisions
thereof to the extent such principles or rules would require
or permit the application of the laws of any jurisdiction
other than those of the State of California . . . The sole
jurisdiction and venue for any action for breach of or to
enforce this Agreement shall be the United States District
Court for the Northern District of California. All Parties
consent to the jurisdiction of such courts for any such
action and agree that process may be served in the manner
allowed by the laws of the State of California or United
States federal law.
final relevant passage of the Settlement Agreement dealt with
applicable relief if either party breached the agreement. It
provided that the non-breaching party can seek equitable
relief if the breaching party causes irreparable harm.
(Id., at 13).
“8.6 Equitable Relief. Each party acknowledges that a
breach by the other party of this Agreement may cause the
non-breaching party irreparable harm, for which an award of
damages would not be adequate compensation and, in the event
of such a breach or threatened breach, the non-breaching
party shall be entitled to seek equitable relief, including
in the form of a restraining order, orders for preliminary or
permanent injunction, specific performance, and any other
relief that may be available from any court . . . These
remedies shall not be deemed to be exclusive but shall be in
addition to all other remedies available under this Agreement
at law or inequity, subject to any express exclusions or
limitations in this Agreement to the contrary.”
the standstill period ended on February 28, 2019, GREE
commenced the three Texas Actions against Supercell in the
Eastern District of Texas alleging only patent infringement
claims. Later that day, Supercell sued GREE in the
N.D.Cal., alleging, as amended, breach of contract claims and
declaratory judgment claims related to all patents asserted
in the Texas Actions as well as two additional patents. (Dkt.
No. 26, at 4).
then moved for a temporary restraining order in the the
N.D.Cal. action, seeking to prevent GREE from pursuing the
Texas Actions. The California court denied the motion and
stayed the action, pending resolution of this Motion. (Dkt.
No. 64, at 1 n.1).