A federal judicial panel is set to hear arguments next month on whether to coordinate about a dozen patent infringement lawsuits brought by the same company into multidistrict litigation, the first such request since a pivotal U.S. Supreme Court decision this year changed venue rules.
Patent lawyers predicted a spike in MDL requests after the high court’s May 22 ruling in TC Heartland v. Kraft Foods made it harder to bring patent infringement cases in the Eastern District of Texas. On Sept. 28, the U.S. Judicial Panel on Multidistrict Litigation will consider whether to coordinate 14 lawsuits brought by Blue Spike, a nonpracticing entity that has sued companies such as Barnes & Noble, Toshiba and Juniper Networks.
“I would be surprised if this is the first and last time we see this as a reaction to TC Heartland,” said Alyssa Caridis, a partner at Orrick, Herrington & Sutcliffe in Los Angeles. “It’s difficult to predict whether there will be a lot more. But given how TC Heartland is being applied throughout the country, you can see the appeal for both plaintiffs and defendants to use MDL tools to consolidate their expenses and their efforts going forward.”
Neither Blue Spike’s attorney, Randall Garteiser, of Garteiser Honea in Tyler, Texas, nor Andrew Holmes, a partner at Quinn Emanuel Urquhart & Sullivan in San Francisco, who filed a response opposing an MDL on behalf of 10 defendants in the suits, responded to requests for comment.
TC Heartland tightened venue rules after the Supreme Court found that a corporation “resides” only in its place of incorporation, or where infringement occurs, and a defendant has “a regular and established place of business.” The ruling prompted a drop in filings in Texas and an uptick in Delaware and California.
Blue Spike has filed cases over patents involving computers, software, smartphones and streaming media players. Last month, Blue Spike filed a motion to transfer 14 cases to the Eastern District of Texas before U.S. District Judge Robert Schroeder, who is overseeing 10 of them. Three cases have since been dismissed. Defendants have moved to transfer some of them to California or New York. One case, against Roku Inc., was filed in Delaware after Schroeder dismissed an earlier case based on TC Heartland. Another case against Vizio Inc. is in the Central District of California.
In the motion, Garteiser claims the cases involved 34 patents “that are in common with at least one other case.” In an Aug. 2 response, Holmes wrote that the move was an end run around TC Heartland.
“Blue Spike’s motion is a transparent attempt to use the MDL process to forum shop and circumvent federal laws governing venue for patent infringement cases,” he wrote. Granting the motion “would have grave long-term effects on patent litigation in the United States. It would give patent plaintiffs a free pass to side-step and ignore venue statutes and Supreme Court precedent. And it would encourage forum shopping through the MDL process.”
He noted that the cases involved nine different patent families, and that most of Blue Spike’s cases have been voluntarily dismissed or settled.
Whether the MDL panel grants the motion is unclear. The panel has coordinated infringement cases in the past, even in cases where the patents weren’t necessarily related. Some have involved different defendants, too. But the panel’s decision in the Blue Spike cases could clarify the venue options available to both sides after TC Heartland.
“Either way it’s going to be something to watch,” said Matthew Rizzolo, of counsel at Ropes & Gray in Washington, D.C. “If they MDL this, particularly with a disparate group of patents, where they’re from the same family and not the same exact patent, then I think you could see a number of plaintiffs making a run to the MDL panel.”