NOT PRECEDENTIAL
UNITED STATES COURT OF APPEALS
FOR THE THIRD CIRCUIT
_____________
No. 17-3445
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SAMSUNG ELECTRONICS CO., LTD.,
Appellant
v.
IMPERIUM HOLDINGS (Cayman), LTD.
____________
On Appeal from the United States District Court
for the District of Delaware
(D.C. No. 1-15-cv-01059)
District Judge: Honorable Mark A. Kearney
Submitted under Third Circuit L.A.R. 34.1(a)
April 1, 2019
Before: CHAGARES, HARDIMAN, and SILER, JR.,* Circuit Judges
(Filed: April 8, 2019)
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OPINION
____________
*
The Honorable Eugene E. Siler, Jr., Senior United States Circuit Judge for the Court of
Appeals for the Sixth Circuit, sitting by designation.
This disposition is not an opinion of the full Court and, pursuant to I.O.P. 5.7, does not
constitute binding precedent.
CHAGARES, Circuit Judge.
Samsung Electronics alleges that Imperium Holdings breached a licensing
agreement to which Samsung was a third-party beneficiary by bringing a patent-
infringement action against Samsung in the Eastern District of Texas. The District Court
dismissed Samsung’s complaint under the first-filed rule. We will vacate and remand.
I.
We write for the parties and so recount only the facts necessary to our decision.
Imperium filed a complaint against Samsung alleging patent infringement in the United
States District Court for the Eastern District of Texas in June 2014. After discovery,
Samsung requested leave to raise a licensing agreement between Imperium and Sony as a
defense. Samsung then filed this lawsuit against Imperium in the United States District
Court for the District of Delaware, seeking damages for breach of contract and
declaratory relief. The District Court stayed this action (the Delaware case). The Texas
case went to trial, and Samsung essentially lost. In a post-trial order, the District Court
for the Eastern District of Texas held that Samsung had forfeited any defense based on
the Sony license. Samsung appealed to the Court of Appeals for the Federal Circuit.
Back in Delaware, the District Court lifted the stay and Imperium moved to
dismiss. The District Court granted the motion under the first-filed rule. The dismissal,
however, was without prejudice to Samsung’s renewing its claims “in the first filed
action should the United States Court of Appeals for the Federal Circuit remand for
further proceedings.” Samsung Elecs. Co., Ltd v. Imperium IP Holdings (Cayman), Ltd.,
2017 WL 4532195, at *6 (D. Del. Oct. 10, 2017). Samsung timely appealed that decision
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to this Court.
After this appeal was briefed, the Court of Appeals for the Federal Circuit reversed
the judgment against Samsung. Imperium IP Holdings (Cayman), Ltd. v. Samsung Elecs.
Co., No. 2017-2107, 2019 WL 404570, at *5 (Fed. Cir. Jan. 31, 2019). The court did not
evaluate Samsung’s license defense, holding that any “remaining issues” were “mooted
by the reversal of liability.” Id.
II.
The District Court had jurisdiction under 28 U.S.C. § 1332. We have appellate
jurisdiction under 28 U.S.C. § 1291. We review application of the first-filed rule for
abuse of discretion. E.E.O.C. v. Univ. of Pa., 850 F.2d 969, 972 (3d Cir. 1988).
III.
The first-filed rule provides that, “[i]n all cases of concurrent jurisdiction, the
court which first has possession of the subject must decide it.” Crosley Corp. v.
Hazeltine Corp., 122 F.2d 925, 929 (3d Cir. 1941) (quotation marks omitted) (quoting
Smith v. McIver, 22 U.S. 532, 535 (1824)). “[I]n the vast majority of cases, a court
exercising its discretion under the first-filed rule should stay or transfer a second-filed
suit.” Chavez v. Dole Food Co., Inc., 836 F.3d 205, 220 (3d Cir. 2016) (en banc).
“Because a stay confines litigants to the first forum until proceedings there have
concluded,” we have explained, “a stay will generally avoid wasted judicial efforts,
conflicting judgments, and unnecessary friction between courts.” Id. Here, the District
Court dismissed Samsung’s claims without prejudice to their being refiled in the Texas
litigation “should the United States Court of Appeals for the Federal Circuit remand for
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further proceedings.” Samsung, 2017 WL 4532195, at *6. As we have explained, “Even
a dismissal without prejudice may create unanticipated problems.” Chavez, 836 F.3d at
221. Since the Court of Appeals for the Federal Circuit did not remand to the Texas
court, the District Court’s decision is in effect a dismissal with prejudice, which “will
almost always be an abuse of discretion.” Id. None of the circumstances warranting such
a dismissal are present. See id. So we will vacate the District Court’s order.
Now that “a final resolution in the first court” has been reached, we will remand to
the District Court to consider in the first instance whether this case presents one of “the
few instances where there is no res judicata (or other) bar that would prevent litigation in
the second forum,” Chavez, 836 F.3d at 220, and for any other proceedings it deems
appropriate.
IV.
For these reasons, we will vacate the District Court’s order and remand to the
District Court.
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