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`Case MDL No. 3042 Document 46 Filed 08/03/22 Page 1 of 4Case 2:22-md-03042-JRG Document 1 Filed 08/03/22 Page 1 of 4 PageID #: 1
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`A TRUE COPY I CERTIFY
`(cid:39)(cid:36)(cid:57)(cid:44)(cid:39)(cid:3)(cid:36)(cid:3)(cid:50)(cid:10)(cid:55)(cid:50)(cid:50)(cid:47)(cid:40), CLERK
`U.S. DISTRICT COURT
`EASTERN DISTRICT OF TEXAS
`
`By: _________________________
`
`keciaclendening
`
`UNITED STATES JUDICIAL PANEL
`on
`MULTIDISTRICT LITIGATION
`
`8/3/22
` FILED:
`U.S. DISTRICT COURT
`EASTERN DISTRICT COURT
`DAVID (cid:36)(cid:17)(cid:3)(cid:50)(cid:10)(cid:55)(cid:50)(cid:50)(cid:47)(cid:40), CLERK
`
`IN RE: TAASERA LICENSING, LLC,
`PATENT LITIGATION
`
`MDL No. 3042
`
`TRANSFER ORDER
`
`Before the Panel:* Plaintiff Trend Micro, Inc. (U.S.), moves under 28 U.S.C. § 1407 to
`centralize this litigation in the Northern District of California or, alternatively, the Southern
`District of New York. This litigation consists of four actions as listed on Schedule A—two patent
`infringement actions in the Eastern District of Texas and one declaratory judgment action each in
`the Southern District of New York and the Northern District of Texas. The defendants in the
`Eastern District of Texas actions (Check Point Software Technologies Ltd. and Trend Micro
`Incorporated (Japan)) both support the motion. Palo Alto Networks, Inc., the plaintiff in the
`Southern District of New York action, opposes centralization and, alternatively, suggests the
`Southern District of New York as the transferee district. The patentholder, Taasera Licensing
`LCC, opposes centralization, as does its corporate parent, Quest Patent Research Corporation,
`which is named as a defendant in the New York declaratory judgment action. Taasera alternatively
`suggests centralization in the Eastern District of Texas.
`
`On the basis of the papers filed and the hearing session held, we find that the actions listed
`on Schedule A involve common questions of fact, and that centralization in the Eastern District of
`Texas will serve the convenience of the parties and witnesses and promote the just and efficient
`conduct of this litigation. At issue in this litigation are eleven patents owned by Taasera in the
`field of computer network security.1 Six of these patents are asserted in all four actions; three
`patents are asserted in three actions. In its patent infringement actions, Taasera alleges that
`defendants’ network security products, which protect computer systems from viruses and malware,
`infringe the patents. In the declaratory judgment actions, plaintiffs seek a declaration that their
`network security products do not infringe the patents. The actions can be expected to share factual
`questions concerning such matters as the technology underlying the patents, prior art, and claim
`construction. Centralization under Section 1407 will eliminate duplicative discovery; prevent
`inconsistent pretrial rulings (particularly with respect to claim construction); and conserve the
`resources of the parties, their counsel, and the judiciary.
`
`* Judge Roger T. Benitez did not participate in the decision of this matter.
`
`1 The asserted patents are: U.S. Patent No. 6,842,796; U.S. Patent No. 7,673,137; U.S. Patent No.
`8,127,356; U.S. Patent No. 8,327,441; U.S. Patent No. 8,850,517; U.S. Patent No. 8,955,038; U.S.
`Patent No. 8,990,948; U.S. Patent No. 9,071,518; U.S. Patent No. 9,092,616; U.S. Patent No.
`9,608,997; and U.S. Patent No. 9,923,918.
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`The opposing parties’ arguments against centralization are not persuasive. They point to
`the differences between both the accused products, which range from email scanners to internet
`firewalls, and likely infringement issues. Undoubtedly, there will be differences in how these
`products operate and how they allegedly implement the patents-at-issue. But all of the accused
`products operate in the same field of technology—computer network security. Cf. In re RAH
`Color Techs. LLC Patent Litig., 347 F. Supp. 3d 1359, 1359–60 (J.P.M.L. 2018) (centralizing
`actions involving printers, print servers, and color imaging software as overlapping in the “field of
`color management technology”). Given the similarity in the infringement allegations by Taasera,
`we are persuaded that the overlap between the products is sufficiently substantial to merit
`centralization. See In re Proven Networks, LLC, Patent Litig., 492 F. Supp. 3d, 1338, 1339
`(J.P.M.L. 2020) (“[D]ifferences in the accused products and infringement allegations in the cases
`do not prevent centralization where common factual issues involving claim construction and patent
`invalidity are shared.”).
`
`The opposing parties also argue that alternatives to centralization—including both informal
`coordination and transfer of actions under the first-to-file rule and 28 U.S.C. § 1404—are
`available. To be sure, there are occasions where informal coordination of a handful of patent
`infringement actions may be practicable. Here, though, the actions involve complex technology
`patents that will require substantial time and effort by the courts when claim terms are construed.
`There are significant efficiencies to be gained, for both the parties and the judicial system, by
`having only one court oversee discovery relating to the common patents and conduct claim
`construction. See In re Bear Creek Techs., Inc., (‘722) Patent Litig., 858 F. Supp. 2d 1375, 1379–
`80 (J.P.M.L. 2012) (“[C]entralization offers substantial savings in terms of judicial economy by
`having a single judge become acquainted with the complex patented technology and construing
`the patent in a consistent fashion (as opposed to having six judges separately decide such issues).”).
`Further, the outcome of the pending motions to dismiss and/or to transfer remains too uncertain
`for us to conclude that they offer a reasonable prospect of eliminating the multidistrict character
`of this litigation. Cf. In re Schnuck Markets, Inc., Customer Data Sec. Breach Litig., 978 F. Supp.
`2d 1379, 1380–81 (J.P.M.L. 2013) (centralizing data breach actions where no transfer motions had
`been ruled upon and the procedural posture of the litigation rendered immediate centralization
`appropriate).
`
`Finally, Taasera argues that the multidistrict nature of this litigation was manufactured by
`the declaratory judgment plaintiffs filing their actions in districts outside the Eastern District of
`Texas, where the patent infringement actions were already pending. Even so, we are faced with
`four actions pending in three districts that present common factual questions arising from multiple
`common patents and involving complex technology. The efficiency and convenience benefits of
`having a single judge streamline discovery and pretrial motion practice, as well as to conduct claim
`construction and construe the patents in a consistent manner, warrant centralization in this instance.
`
`The Eastern District of Texas is an appropriate transferee district for this litigation. The
`two patent infringement actions on the motion, which were filed before the declaratory judgment
`actions, are pending in this district. We assign this litigation to the Honorable J. Rodney Gilstrap,
`who is well-versed in complex patent litigation, but has not yet had the opportunity to preside over
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`a multidistrict litigation. We are confident that Judge Gilstrap will steer this litigation on a prudent
`and expeditious course.
`
`IT IS THEREFORE ORDERED that the actions listed on Schedule A and pending outside
`the Eastern District of Texas are transferred to the Eastern District of Texas and, with the consent
`of that court, assigned to the Honorable J. Rodney Gilstrap for coordinated or consolidated pretrial
`proceedings.
`
`PANEL ON MULTIDISTRICT LITIGATION
`
`Karen K. Caldwell
`Chair
`
`Nathaniel M. Gorton
`David C. Norton
`Madeline Cox Arleo
`
`Matthew F. Kennelly
`Dale A. Kimball
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`IN RE: TAASERA LICENSING, LLC,
`PATENT LITIGATION
`
`MDL No. 3042
`
`SCHEDULE A
`
`Southern District of New York
`
`PALO ALTO NETWORKS, INC. v. TAASERA LICENSING LLC, ET AL.,
`C.A. No. 1:22−02306
`
`Eastern District of Texas
`
`TAASERA LICENSING LLC v. TREND MICRO INCORPORATED,
`C.A. No. 2:21−00441
`TAASERA LICENSING LLC v. CHECK POINT SOFTWARE TECHNOLOGIES
`LTD., C.A. No. 2:22−00063
`
`Northern District of Texas
`
`TREND MICRO, INC. v. TAASERA LICENSING LLC, C.A. No. 3:22−00518
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