Apple, Inc. v. Piney Woods Mobility LLC

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UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
APPLE, INC.,
Plaintiff,
v.
PINEY WOODS MOBILITY LLC,
Defendant.
Case No. 26-cv-05219-RFL
ORDER GRANTING MOTION TO
STAY, DENYING MOTION TO
DISMISS, AND DENYING MOTION
TO TRANSFER
Re: Dkt. Nos. 18, 24
Piney Woods has moved to dismiss or stay this case under the first-to-file rule. The
motion to stay is granted and the motion to dismiss is denied. The case is stayed pending
resolution of an earlier-filed action in the Western District of Texas, Piney Woods Mobility LLC
v. Apple Inc., Case No. 7:26-cv-00068-ADA (W.D. Tex.). Piney Woods’s motion to transfer is
accordingly denied without prejudice as moot. This order assumes the reader is familiar with the
facts of the case, the applicable legal standards, and the arguments made by the parties.
The first-to-file rule applies because the Western District of Texas action, which was
filed before this action, is between the same parties and concerns the same patents as this action.1
See Piney Woods, Case No. 7:26-cv-00068-ADA (W.D. Tex.), Dkt. No. 1; see also Futurewei
Techs., Inc. v. Acacia Rsch. Corp., 737 F.3d 704, 708 (Fed. Cir. 2013) (“When 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.”).2
1 Piney Woods’s unopposed request for judicial notice (Dkt. No. 21) is granted.
2 Federal Circuit law governs application of the first-to-file rule, because this is a declaratory
judgment action arising out of patent law. See Futurewei, 737 F.3d at 708 (“Resolution of
whether the second-filed action should proceed presents a question sufficiently tied to patent law
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Apple does not dispute these facts, but instead argues that the Western District of Texas
action is no longer proceeding because Piney Woods did not timely serve Apple, and was denied
an extension of time to do so. Piney Woods, Case No. 7:26-cv-00068-ADA (W.D. Tex.), Dkt.
No. 12. Apple has moved to dismiss that action on that basis. Piney Woods, Case No. 7:26-cv-
00068-ADA (W.D. Tex.), Dkt. No. 6. But that motion is still pending, so that action is still
proceeding. Although Apple argues the Western District of Texas must grant the motion under
Rule 4(m), it is not this Court’s role to decide a motion filed in another court. See, e.g., Merial
Ltd. v. Cipla Ltd., 681 F.3d 1283, 1299 (Fed. Cir. 2012) (“The ‘first-to-file’ rule is a doctrine of
federal comity, intended to avoid conflicting decisions and promote judicial efficiency . . . .”).
Apple also argues that the first-to-file rule should not apply because of concerns about
gamesmanship. Specifically, Apple is concerned that Piney Woods “strategically delayed
litigating” the Western District of Texas action, in order to prevent Apple from defending itself
against Piney Woods’s patent infringement claims while Piney Woods proceeds with similar
claims against Apple’s customers. (See Dkt. No. 31 at 10 (all citations refer to ECF pagination).)
There are indications that these are real concerns. But Apple has not explained how it will be
further prejudiced by a short stay while the Western District of Texas considers its fully briefed
motion to dismiss. See Piney Woods, Case No. 7:26-cv-00068-ADA (W.D. Tex.), Dkt. Nos. 6,
14, 15, 16.
Given that the first-to-file rule applies, a stay is the appropriate remedy. Dismissal would
be inefficient, because the pending motion to dismiss in the Western District of Texas action
could be granted, which would mean this action should proceed. If that happens, it would be a
waste of party and judicial resources to force Apple to refile this action. See Alltrade, Inc. v.
Uniweld Prods., Inc., 946 F.2d 622, 629 (9th Cir. 1991) (“[W]here the first-filed action presents
a likelihood of dismissal, the second-filed suit should be stayed, rather than dismissed.”).3
that the question is governed by this circuit’s law.”).
3 Piney Woods originally asked for dismissal on the alternate basis that there is no personal
jurisdiction, but it retracted that request in its reply brief, so there is no need to address it now.
(Dkt. No. 34 at 13.)
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For the reasons explained above, Piney Woods’s motion to stay is GRANTED and its
motion to dismiss is DENIED. (Dkt. No. 18.) The case is stayed pending the resolution of
Piney Woods, Case No. 7:26-cv-00068-ADA (W.D. Tex.). Piney Woods’s motion to transfer
(Dkt. No. 24), which was brought in the alternative to its motion to stay, is DENIED without
prejudice as moot, as is the accompanying request for judicial notice (Dkt. No. 28).
The parties shall file a joint status report every 180 days or within 14 days of the
resolution (including any dismissal) of Piney Woods, Case No. 7:26-cv-00068-ADA (W.D.
Tex.), whichever is earlier.
IT IS SO ORDERED.
Dated: October 7, 2026
RITA F. LIN
United States District Judge
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