2012 U.S. Dist. LEXIS 60884
J.P.M.L.2012Background
- Bear Creek moves under 28 U.S.C. §1407 for centralization of 14 actions across three districts alleging infringement of the same patent; respondent defendants include Vonage and others who oppose centralization; the plan contemplates transferring to one district for coordinated pretrial proceedings and assigning to Judge Gregory M. Sleet if Delaware is selected; the actions involve infringement, validity, and enforceability of U.S. Patent No. 7,889,722 ('722 patent) titled “System for Interconnecting Standard Telephony Communications Equipment to Internet Protocol Networks”; some defendants urged selecting Delaware or the Eastern District of Pennsylvania as transferee; Vonage argues §299(b) of the America Invents Act limits §1407 centralization; Bear Creek contends AIA §299 does not apply to pretrial centralization, which is focused on common questions of fact for pretrial proceedings; the Panel must determine whether centralization is appropriate and which transferee district serves convenience and efficiency; the Panel may centralize for pretrial proceedings but does not consolidate trials or merge actions; the decision ultimately centralizes the listed actions in Delaware with Judge Sleet after transfer; Schedule A lists the 14 actions by district and party names.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Does the AIA joinder provision limit §1407 centralization? | Bear Creek: AIA §299 does not affect §1407 centralization. | Vonage: §299(b) limits centralization where only commonality is patent infringement. | AIA does not affect §1407 centralization. |
| Are centralization benefits sufficient given factual variance among actions? | Bear Creek: common questions about validity/enforceability of the '722 patent justify centralization. | Opposing defendants: variance among systems and industries undermines efficiency. | Benefits of transfer under §1407 outweigh variances; centralization warranted. |
| Which district should serve as transferee for pretrial proceedings? | District of Delaware appropriate; Delaware already hosts ten actions and Judge Sleet is chosen as transferee judge. |
Key Cases Cited
- In re: Enron Corp. Sec., Derivative & ERISA Litig., 196 F.Supp.2d 1375 (J.P.M.L.2002) (illustrates MDL transfer for pretrial proceedings; coordination vs consolidation)
- In re Regions Morgan Keegan Sec., Derivative & ERISA Litig., 598 F.Supp.2d 1379 (J.P.M.L.2009) (illustrates exercise of MDL authority and discretion to coordinate pretrial proceedings)
- In re CVS Caremark Corp. Wage & Hour Employment Pracs. Litig., 684 F.Supp.2d 1377 (J.P.M.L.2010) (example of MDL centralization involving different actions with common questions of fact)
- In re Rembrandt Technologies, LP, Patent Litigation, 493 F.Supp.2d 1367 (J.P.M.L.2007) (centralization of patent-related MDLs with common technical background questions)
- In re: Method of Processing Ethanol Byproducts and Related Subsystems (’858) Pat. Litig., 730 F.Supp.2d 1379 (J.P.M.L.2010) (illustrates centralization across patent cases with common patent issues)