A recipient of a cease and desist letter from an intellectual property owner threatening litigation may sometimes choose to “strike first” by filing a declaratory judgment action. Doing so potentially offers several strategic advantages, including choice of venue, securing the position of plaintiff, and forcing the intellectual property holder’s hand if it was not prepared to proceed with litigation. Assuming there is subject matter jurisdiction for one under MedImmune v. Genentech,1 commencing a declaratory judgment action may also provide grounds for dismissal of any related, subsequently-filed action by the intellectual property holder pursuant to the “first-filed” doctrine, particularly if the alleged infringer’s chosen venue is more convenient.

However, courts in the Second Circuit do not automatically confer these benefits on an alleged infringer who wins the race to the courthouse. Rather, courts have identified a limited number of situations where a second-filed action may proceed notwithstanding the first-filed doctrine, even if the first-filed action is located in the more convenient forum. These situations include where the first-filed action was an “improper anticipatory filing,” i.e., “one made under the apparent threat of a presumed adversary filing the mirror image of that suit in a different federal district.”2

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