Gestamp Washtenaw, LLC v. Lincoln Electric Automation, Inc. f/k/a Tennessee Rand, Inc. ( 2022 )

UNITED STATES DISTRICT COURT EASTERN DISTRICT OF MICHIGAN SOUTHERN DIVISION GESTAMP WASHTENAW, LLC, et al., Plaintiffs, Case No. 21-cv-12714 Hon. Matthew F. Leitman v. LINCOLN ELECTRIC AUTOMATION, INC., Defendant. __________________________________________________________________/ ORDER (1) GRANTING DEFENDANT’S MOTION FOR LEAVE TO FILE A RESPONSE BRIEF (ECF No. 22); (2) GRANTING IN PART AND DENYING IN PART DEFENDANT’S MOTION TO DISMISS (ECF No. 9); AND (3) STAYING THIS ACTION On November 19, 2021, Plaintiffs Gestamp Washtenaw, LLC and Gestamp North America, Inc. (collectively, “Gestamp”) filed this declaratory judgment action against Defendant Lincoln Electric Automation, Inc. (See Compl., ECF No. 1.) Gestamp seeks, among other things, a declaratory judgment that it is the co-owner of certain software code. (See id.) Lincoln Electric has now moved to dismiss Gestamp’s Complaint.1 (See Mot. to Dismiss, ECF No. 9). In the motion to dismiss, Lincoln Electric argues that Gestamp’s Complaint in this Court is barred by the “first to file” rule “because the 1 Lincoln Electric has also filed a motion for leave to file a response brief in further support of its motion to dismiss. (See Mot., ECF No. 22.) That motion is GRANTED. claims asserted [in this action] arise from the same set of operative facts at issue” in an earlier-filed action that is pending between the parties in the United States District Court for the Northern District of Ohio, N.D. Ohio Case No. 20-cv-2433. (Id., PageID.34.) Lincoln Electric further argues that Gestamp’s claims here were compulsory counterclaims in the Ohio action under Federal Rule of Civil Procedure 13(a)(1). (See id.) The Court held a hearing on Lincoln Electric’s motion on April 25, 2022, and it GRANTS the motion IN PART and DENIES it IN PART. For the reasons explained on the record, the Court concludes that Lincoln Electric has satisfied the elements of the first-to-file rule and that the first-to-file rule therefore applies in this action. See Baatz v. Columbia Gas Transmission, LLC, 814 F.3d 785, 789 (6th Cir. 2016) (describing elements). As further described on the record, the Court also concludes that the proper exercise of its discretion is to STAY this action pending either (1) a resolution of the Ohio action or (2) some other occurrence in the Ohio action that makes the resumption of this action appropriate. Either party may file a motion to lift the stay upon the occurrence of one of the two options identified above. IT IS SO ORDERED. s/Matthew F. Leitman MATTHEW F. LEITMAN Dated: April 25, 2022 UNITED STATES DISTRICT JUDGE I hereby certify that a copy of the foregoing document was served upon the parties and/or counsel of record on April 25, 2022, by electronic means and/or ordinary mail. s/Holly A. Ryan Case Manager (313) 234-5126