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`Case 2:12-mc-00244-JFC Document 1 Filed 06/22/12 Page 1 of 5
`Case 2:12-mc-00244-JFC Document 1 Filed 06/22/12 Page 1 of 5
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`UNITED STATES JUDICIAL PANEL
`on
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`MULTIDISTRICT LITIGATION
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`”& " /¢< ~c; 44
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`IN RE: MAXIM INTEGRATED PRODUCTS,
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`INC., PATENT LITIGATION
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`MDL No. 2354
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`CORRECTED TRANSFER ORDER
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`Before the Panel? Pursuant to 28 U.S.C. § 1407, patentholder Maxim Integrated Products,
`Inc. (Maxim) seeks centralization in the Eastern District of Texas. This litigation currently consists
`of the fourteen actions, pending in five districts, listed on Schedule A.1
`
`All responding parties oppose centralization. Various parties2 alternatively suggest selection
`ofthe Northern District ofCalifornia as the transferee district. Declaratory judgement plaintiffs PNC
`and Vanguard3 and Eastern District of Texas defendant QVC, Inc. suggest selection of the Western
`District of Pennsylvania. Declaratory judgment plaintiff Jack Henry & Assocs. and defendant First
`United Bank & Trust Co. suggest selection of the District of Kansas as the transferee forum or,
`alternatively, the Northern District of California. Regardless of their stated forum preference, these
`responding parties do not oppose centralization in any of the suggested transferee forums (but they
`specifically oppose selection of the Eastern District of Texas).
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`Maxim is the owner by assignment from Dallas Semiconductor (a wholly owned subsidiary
`of Maxim reportedly purchased in 2001) of five patents related to mobile commerce.4 Specifically,
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`'
`matter.
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`Judges John G. Heyburn II and Kathryn H. Vratil did not participate in the decision of this
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`1 The parties have notified the Panel of three related actions pending in the Northern District of
`California, the District of Massachusetts, and the Northern District of Ohio. These actions and any
`other related actions are potential tag—along actions. See Rules 1.1(h), 7.1 and 7.2, R.P.J.P.M.L.
`
`2 Bank of the West; Capital One Financial Corp. (which, at oral argument, noted that plaintiff in
`a potential tag-along action, Clairmail, Inc., shares its position); Starbucks Corp; Expedia, Inc.;
`Chipotle Mexican Grill, Inc.; Comerica, Inc.; Groupon, Inc.; Fidelity Brokerage Services LLC;
`KeyCorp and KeyBank, NA; and Union Bank, NA. and UnionBankCal Corp..
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`3 The PNC Financial Services Group, Inc., and PNC Bank, NA, and The Vanguard Group, Inc.
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`4 At issue in one or more actions in this litigation are the following: US. Patent No. 5,940,510
`(the ’5 10 patent), entitled “Transfer ofValuable Information Between a Secure Module and Another
`Module,” US. Patent No. 5,949,880 (the ’880 patent), entitled “Transfer of Valuable Information
`Between a Secure Module and Another Module,” US. Patent No. 6,105,013 (the ’013 patent),
`entitled “Method, Apparatus, System, and Firmware for Secure Transactions,” US. Patent No.
`(continued...)
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`CQG EXHIBIT 1009
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`CQG EXHIBIT
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`Case 2:12-mc-00244-JFC Document 1 Filed 06/22/12 Page 2 of 5
`Case 2:12-mc-00244-JFC Document 1 Filed 06/22/12 Page 2 of 5
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`the patents are directed to various systems and methods for performing secure transactions using
`mobile devices and also involve secure exchanges of information using mobile encryption and
`decryption and related capabilities. The actions currently before the Panel are infringement actions
`brought by Maxim or declaratory judgment actions brought by various parties that Maxim has
`asserted have infringed the patents.
`
`The responding parties uniformly oppose centralization, principally arguing that any common
`factual issues among the actions are subsumed by unique factual issues presented by each defendant,
`including questions ofcontributory or induced infringement. There could very well be some variances
`in terms of the technology employed with the various defendants’ respective mobile applications or
`the circumstances surrounding the alleged infringement, but “[t]ransfer under Section 1407(a) does
`not require a complete identity or even a majority of common factual or legal issues as a prerequisite
`to transfer.” See In re Rembrandt Tee/13., LP, Patent Ling, 493 F. Supp. 2d 1367, 1369 (J.P.M.L.
`2007). The fourteen actions before us involve common factual questions concerning the background
`of the patents and the subject matter (1'. e. , mobile applications performing secured transactions); yet,
`respondents appear to desire an opportunity to advance multiple, individualized — and possibly
`conflicting — invalidity positions that are informed by multiple non-infiingement theories. We are of
`the View that centralization can meaningfully reduce the number of potentially inconsistent rulings
`and create significant efficiencies over respondents’ proposed fragmented approach. Centralization
`will place all actions before a single judge who can preside over discovery relating to the common
`patents, which will inform and aid the consistent construction of the patents’ claims. The transferee
`judge can further rule on all challenges to the validity of the patents (and accommodate such matters
`as a post—grant review of some of the patents’ business method claims, which defendants note can be
`made with the Patent and Trademark Office after September 17, 2012, pursuant to Section 18 of the
`America Invents Act (AIA)) and otherwise streamline the pretrial proceedings.
`
`Respondents also argue that the AIA is incompatible with centralization. While we recently
`held that “the America Invents Act does not alter our authority to order pretrial centralization of this
`litigation,” see In re Bear Creek Techs., Inc., (722) Patent Ling, _ F. Supp. 2d. _, 2012 WL
`1523340, *2 (J.P.M.L. May 2, 2012), respondents correctly note that the AlA’s right to separate
`trials should be taken into account when making the decision to centralize a given litigation, inasmuch
`as the AIA is the new reality in patent litigation and its right to separate trials could impact the Panel’s
`calculus regarding whether centralization benefits “the convenience of parties and witnesses” and
`“will promote the just and efficient conduct” of the litigation. 28 U.S.C. § 1407(a).
`
`While the AIA changed the landscape of patent litigation — particularly the filing of actions
`against multiple unrelated defendants and the right to a separate trial when defendants are only
`accused of violating the same patent — it does not follow that the mere possibility of factual disputes
`
`4(...continued)
`6,237,095 (the ’095 patent), entitled “Apparatus for Transfer of Secure Information Between a Data
`Carrying Module and an Electronic Device,” and US Patent No. 5,805,702 (the ’702 patent),
`entitled “Method, Apparatus, and System for Transferring Units of Value.” The patents are part of
`two related patent families.
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`regarding a particular invalidity defense or the infringement of a particular product that might need
`to be presented to a jury (or juries) is sufficient to deny centralization of actions otherwise involving
`common factual questions. Nor should such a determination automatically trump the pretrial
`efficiencies (notably in having a single judge construe the patent’s claims, as opposed to five judges
`in various districts) that can be gained from centralizing this litigation.
`
`Respondents are also wrong to read into Section 1407 a requirement that the proponent of
`centralization in patent litigation prove to the Panel that any factual disputes regarding common
`factual questions will be resolved during pretrial proceedings. As the Panel held long ago, “[t]he
`framers of Section 1407 did not contemplate that the Panel would decide the merits of the actions
`before it and neither the statute nor the implementing Rules of the Panel are drafted to allow for such
`determinations.” In re Kaufi’man Mut. Fund Actions, 337 F. Supp. 1337, 1339-40 (J.P.M.L.1972).
`
`As this litigation progresses, whether the actions are appropriate for trial, and upon what
`issues, will become more apparent to the transferee judge than here to the Panel at the outset of these
`cases, all of which were filed earlier this year. The rights afforded defendants under the joinder and
`trial consolidation provisions of the AIA may play a role in the transferee judge’s conduct of the
`MDL proceedings, including the judge’s determination ofwhen a remand to the transferor court may
`be appropriate. For instance, prompt remand after the common claims are construed and summary
`judgment addressed on certain common invalidity grounds may be appropriate. But we need not
`decide the exact course of this litigation now. As always, we trust such matters to the sound
`judgment of the transferee judge.
`
`Thus, on the basis of the papers filed and hearing session held, we find that these fourteen
`actions involve common questions of fact, and that centralization will serve the convenience of the
`parties and witnesses and promote the just and efficient conduct of the litigation. All actions concern
`factual questions surrounding the interpretation, validity and enforceability offive inter-related patents
`owned by Maxim and relating to secured transactions made with various mobile applications using
`similar devices that communicate via the Transportation Layer Security (TLS) protocol.
`Centralization will eliminate duplicative discovery, prevent inconsistent pretrial rulings (particularly
`on claim construction issues), and conserve the resources of the parties, their counsel and the
`judiciary.
`
`We are of the View that the Western District of Pennsylvania is an appropriate transferee
`district for pretrial proceedings in this litigation. This district, where a declaratory judgment action
`is pending, enjoys favorable caseload conditions and is relatively geographically accessible. The
`Western District ofPennsylvania is participating in the national Patent Pilot Program, and Judge Nora
`Barry Fischer is one of the judges participating in that program. Moreover, the district was an early
`leader in establishing Local Patent Rules, and adopting a Model Protective Order, a Model Patent
`Case Scheduling Order, and a standardized Joint Disputed Claim Term Chart. With these procedures
`in place, litigants can expect a prompt claim construction ruling. Finally, centralization in this district
`serves the convenience of the parties, inasmuch as three parties are either incorporated in or have
`their principal place ofbusiness in Pennsylvania (PNC, QVC and Vanguard), an additional five parties
`— including Maxim— are incorporated in the neighboring state of Delaware, and four other parties are
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`Case 2:12-mc-00244-JFC Document 1 Filed 06/22/12 Page 4 of 5
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`either incorporated in or have their principal place of business in nearby states, including KeyBank
`(Ohio), Capital One (Virginia), Fidelity (Massachusetts), and Groupon (Illinois).
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`IT IS THEREFORE ORDERED that pursuant to 28 U.S.C. § 1407, the actions listed on
`Schedule A and pending outside the Western District of Pennsylvania are transferred to the Western
`District of Pennsylvania and, with the consent of that court, assigned to the Honorable Nora Barry
`Fischer, for coordinated or consolidated pretrial proceedings.
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`PANEL ON MULTIDISTRICT LITIGATION
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`n, Jr.
`urg
`. Roy
`Acting Chairman
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`Barbara S. Jones
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`Paul J. Barbadoro
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`Marjorie O. RendeII
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`Charles R. Breyer
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`0004
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`Case 2:12-mc-00244-JFC Document 1 Filed 06/22/12 Page 5 of 5
`Case 2:12-mc-00244-JFC Document 1 Filed 06/22/12 Page 5 of 5
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`IN RE: MAXIM INTEGRATED PRODUCTS,
`INC., PATENT LITIGATION
`
`MDL No. 2354
`
`SCHEDULE A
`
`District of Colorado
`
`Chipotle Mexican Grill, Inc. V. Maxim Integrated Products, Inc., CA. No. 1:12-00331
`
`District of Kansas
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`Jack Henry & Associates, Inc. V. Maxim Integrated Products, Inc., CA. No. 2:12-02018
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`Eastern District of Pennsylvania
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`The Vanguard Group, Inc. v. Maxim Integrated Products, Inc., CA. No. 2:12-00327
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`Western District of Pennsylvania
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`The PNC Financial Services Group, Inc., et a1. V. Maxim Integrated Products, Inc.,
`CA. No. 2:12-00089
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`Eastern District of Texas
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`Maxim Integrated Products, Inc.
`Maxim Integrated Products, Inc.
`CA. No. 4112-00006
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`Maxim Integrated Products, Inc.
`Maxim Integrated Products, Inc.
`Maxim Integrated Products, Inc.
`CA. No. 4:12-00017
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`V. Starbucks Corporation, CA. No. 4: 12-00005
`V. Capital One Financial Corporation,
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`V. Expedia, Inc., CA. No. 4212-00007
`V. Bank ofThe West, CA. No. 4:12-00010
`V. First United Bank & Trust Co.,
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`Maxim Integrated Products, Inc.
`Maxim Integrated Products, Inc.
`Maxim Integrated Products, Inc.
`Maxim Integrated Products, Inc.
`Maxim Integrated Products, Inc V. Groupon Inc., CA. No. 4212-00108
`
`V. Southwest Airlines, Co., CA. No. 4212-00104
`
`v. Union Bank, NA, et al., CA. No. 4:12-00105
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`V. QVC, Inc., CA. No. 4:12-00106
`V. Comerica Inc., CA. No. 4:12-00107
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`0005
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