Case 2:22-md-03042-JRG Document 189 Filed 03/30/23 Page 1 of 3 PageID #: 2120
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`IN RE: TAASERA LICENSING LLC,
`PATENT LITIGATION
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`THIS DOCUMENT RELATES TO CASE
`NOS.
`2:21-CV-00441-JRG,
`2:22-CV-
`00063-JRG
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`§
`§
`§
`§
`§
`§
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`CIVIL ACTION NO. 2:22-MD-03042-JRG
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`ORDER
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`Before the Court is the Motion to Transfer Pursuant to 28 U.S.C. § 1404(a) for Trial (2:21-
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`cv-441, Dkt. No. 45) and the Motion to Transfer Venue to the Northern District of California (2:21-
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`cv-63, Dkt. No. 23) (collectively, the “Motions to Transfer”) filed by Trend Micro Incorporated
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`(“Trend Micro Japan”) and Check Point Software Technologies Ltd. (“Check Point”),
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`respectively.
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`Beginning on August 3, 2022, and for tag-along cases filed thereafter, the United States
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`Judicial Panel on Multidistrict Litigation (the “Panel”) centralized the above-captioned litigation
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`in the Eastern District of Texas and transferred the following cases to the same (categorized by
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`their original jurisdictions) for consolidated pretrial proceedings:
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`• Eastern District of Texas:
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`o Taasera Licensing LLC v. Trend Micro Incorporated, Case No. 2:22-CV-00441-
`JRG
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`o Taasera Licensing LLC v. Check Point Software Technologies Ltd., Case No. 2:22-
`CV-00063-JRG
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`o Taasera Licensing LLC v. Fortinet Inc., Case No. 2:22-CV-00415-JRG
`o Taasera Licensing LLC v. Musrubra US LLC d/b/a Trellix, Case No. 2:22-CV-
`00427-JRG
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`o Taasera Licensing LLC v. Palo Alto Networks, Inc., Case No. 2:23-CV-00113-JRG
`• Northern District of Texas:
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`Case 2:22-md-03042-JRG Document 189 Filed 03/30/23 Page 2 of 3 PageID #: 2121
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`o Trend Micro, Inc. v. Taasera Licensing LLC, Case No. 2:22-CV-00303-JRG
`• Western District of Texas:
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`o Taasera Licensing LLC v. CrowdStrike, Inc., CrowdStrike Holdings, Inc., Case No.
`2:22-CV-00468-JRG
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`(Case No. 2:22-md-3042, Dkt. No. 1 at 1, 3). In the Motions to Transfer, and pursuant to 28 U.S.C.
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`§ 1404(a), Trend Micro Japan seeks transfer to the Northern District of Texas (Case No. 2:21-cv-
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`441, Dkt. No. 45) and Check Point seeks transfer to the Northern District of California (Case No.
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`2:22-cv-63, Dkt. No. 23).
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`As a part of centralizing litigation in this Court, the MDL Panel provided that “we find that
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`the actions listed on Schedule A involve common questions of fact, and that centralization in the
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`Eastern District of Texas will serve the convenience of the parties and witnesses and promote the
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`just and efficient conduct of this litigation.” (Case No. 2:22-md-3042, Dkt. No. 1 at 1 (citing 28
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`U.S.C. § 1407(a)). Section 1407(a) provides, in part, “Each action so transferred shall be remanded
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`by the panel at or before the conclusion of such pretrial proceedings to the district from which it
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`was transferred unless it shall have been previously terminated: Provided, however, That the panel
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`may separate any claim, cross-claim, counter-claim, or third-party claim and remand any of such
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`claims before the remainder of the action is remanded.” 28 U.S.C. § 1407(a). In light of this
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`type of language, the Supreme Court has noted that “the legislative history tends to confirm that
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`self-assignment is beyond the scope of the transferee court’s authority.” Lexecon Inc. v. Milberg
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`Weiss Bershad Hynes & Lerach, 523 U.S. 26, 34 (1998). The Supreme Court also held that “the
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`statutory language of § 1407 precludes a transferee court from granting any § 1404(a) motion . . .
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`.” Id. at 41 n.4.
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`Although Case Nos. 2:21-CV-00441-JRG and 2:22-CV-00063-JRG were originally filed
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`in this Court, they remain consolidated for pretrial management and subject to the jurisdiction of
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`the Panel. Section 1407(a) is clear that any action transferred by the Panel “shall be remanded by
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`the [P]anel at or before the conclusion of such pretrial proceedings to the district from which it
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`was transferred . . .” 28 U.S.C. § 1407(a). In fact, the Second Circuit has observed that “Lexecon
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`and § 1407 require that the MDL panel remand to the transferor court any action ‘at or before the
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`conclusion of . . . pretrial proceedings,’ and any further transfers of venue for trial under any statute
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`must follow such remand.” Shah v. Pan Am. World Servs., Inc., 148 F.3d 84, 91 (2d Cir. 1998).
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`Once the Panel’s jurisdiction terminates after pretrial management, discretion to consider all
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`requests to transfer would revert to the Court of origin, in this particular – this Court.
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`At this juncture and in view of the foregoing, the Court finds that the Motions to Transfer
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`(2:21-cv-441, Dkt. No. 45; Case No. 2:22-cv-63, Dkt. No. 23) should be and hereby are DENIED
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`WITHOUT PREJUDICE. The parties may seek leave to refile their Motions to Transfer upon
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`remand by the Panel of each consolidated case to its originating court, or as regards these cases
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`which originated here – when pretrial management under the MDL protocol is complete and ended.
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`.
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`____________________________________
`RODNEY GILSTRAP
`UNITED STATES DISTRICT JUDGE
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`So ORDERED and SIGNED this 29th day of March, 2023.
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