Canva US Inc v. Accessify LLC

UNITED STATES DISTRICT COURT WESTERN DISTRICT OF WASHINGTON AT SEATTLE 10 CANVA US, INC., CASE NO. C23-1945JLR 11 Plaintiff, SHOW CAUSE ORDER v. ACCESSIFY, LLC, et al., Defendants.

15 Before the court is Defendants Accessify, LLC (“Accessify”) and Ascend IP, LLC’s (“Ascend IP”) (together, “Defendants”) motion to dismiss or, in the alternative, to transfer this case to the Western District of Texas. (Mot. (Dkt. # 20); Reply (Dkt. # 32).)

18 Plaintiff Canva US, Inc. (“Canva US”) opposes the motion. (Resp. (Dkt. # 27).) The court ordered additional briefing in light of Accessify’s patent infringement suit against Canva US and two other Canva entities—Canva, Inc. (a Delaware holding company) and Canva Pty Ltd (an Australian company)—pending in the Western District of Texas.

22 (3/14/24 Order (Dkt. # 35); Pl. Supp. Br. (Dkt. # 37); Def. Supp. Br. (Dkt. # 38).) Having considered the parties’ submissions, the relevant portions of the record, and the governing law, the court finds that this action should be stayed pending the Western District of Texas’s disposition of Canva Pty Ltd’s motion to dismiss in the Texas case.

4 The court briefly describes the relevant timeline. On October 23, 2023, Accessify sued Canva, Inc. and Canva Pty Ltd in the Western District of Texas for patent infringement. See generally Complaint, Accessify, LLC v. Canva, Inc., No. 6:23-cv-00727-DC-DTG (W.D. Tex. Oct. 23, 2023), ECF No. 1. On December 18, 2023, Canva US sued Defendants in this court for a declaratory judgment of noninfringement and for violations of Washington’s Patent Troll Prevention Act, RCW 19.350 et seq.

10 (Compl. (Dkt. # 1) ¶¶ 58-119.) On March 7, 2024, Accessify amended its complaint in Texas to add Canva US as a defendant. See generally Am. Compl., Accessify, LLC v. Canva, Inc., No. 6:23-cv-00727-DC-DTG (W.D. Tex. Mar. 7, 2024), ECF No. 20. On March 21, 2024, Canva Pty Ltd and Canva, Inc. filed a still-pending motion to dismiss in the Texas action for improper service and lack of personal jurisdiction. See Mot. to Dismiss at 1, Accessify, LLC v. Canva, Inc., No. 6:23-cv-00727-DC-DTG (W.D. Tex. 16 Mar. 21, 2024), ECF No. 25. And on March 29, 2024, Accessify voluntarily dismissed Canva, Inc. from the Texas case. See Notice of Voluntary Dismissal, Accessify, LLC v. Canva, Inc., No. 6:23-cv-00727-DC-DTG (W.D. Tex. Mar. 29, 2024), ECF No. 28.

19 In their motion pending before this court, Defendants argue that this action should be transferred under the first-to-file rule. (Mot. at 19.) The court finds that the Western District of Texas’s ruling on Canva Pty Ltd’s motion to dismiss may have an impact on // this analysis. See generally Mallinckrodt Medical Inc. v. Nycomed Imaging AS, No. 4:98CV444 ERW, 1998 WL 962203 (E.D. Mo. Nov. 13, 1998).

3 A stay will give the Western District of Texas an opportunity to rule on Canva Pty Ltd’s motion to dismiss. The court therefore ORDERS the parties to show cause why this matter should not be stayed pending the Western District of Texas’s disposition of Canva Pty Ltd’s motion to dismiss. Canva US and Defendants shall each file a response to this order not exceeding 1,200 words by no later than April 8, 2024. Failure to respond to this order will be construed as a consent to a stay.

9 Dated this 3rd day of April, 2024.

A JAMES L. ROBART 11 United States District Judge