PROVEN NETWORKS, LLC., v. CISCO SYSTEMS, INC.,

Filing 15

TRANSFER ORDER re: pldg. ( 1 in MDL No. 2959) Transferring 1 action(s) to Judge Alan D. Albright in the W.D. Texas.Signed by Judge Karen K. Caldwell, Chair, PANEL ON MULTIDISTRICT LITIGATION, on 10/1/2020. Associated Cases: MDL No. 2959, TXE/2:20-cv-00074, TXW/1:20-cv-00498, TXW/1:20-cv-00710, TXW/1:20-cv-00715, TXW/6:20-cv-00281, TXW/6:20-cv-00338, TXW/6:20-cv-00369, TXW/6:20-cv-00632 (CMD)

UNITED STATES JUDICIAL PANEL
on
MULTIDISTRICT LITIGATION

IN RE: PROVEN NETWORKS, LLC, PATENT LITIGATION

MDL No. 2959

TRANSFER ORDER
Before the Panel:* Certain accused infringers1 move under 28 U.S.C. § 1407 to centralize
pretrial proceedings in this patent litigation in the Northern District of California. This litigation
consists of eight actions, pending in two districts, as listed on Schedule A. Originally, there were
ten actions on the motion, including two infringement actions in the Northern District of California
(F5 Networks and Extreme Networks). After the motion was filed, the patentholder voluntarily
dismissed the California actions but filed a new action against F5 Networks, Inc., in the same district
(F5 Networks No. II), amending its allegations and legal claims. F5 Networks No. II is a potential
tag-along action in this litigation.
Patentholder Proven Networks, LLC, opposes centralization and, alternatively, requests the
Western District of Texas as the transferee district. Defendant F5 Networks states that it takes
no position on centralization but, in the event of centralization, it does not oppose the Northern
District of California.
At issue in this litigation are five patents owned by Proven Networks, LLC, in the field of
data networking.2 Proven Networks alleges in all actions that the patents originated from
telecommunications and wireless networking research by Alcatel-Lucent, with the general purpose
of managing and optimizing data flow and storage under varying and adverse data traffic conditions.
The patents allegedly were transferred from Alcatel-Lucent to Provenance Asset Group, LLC
(“Provenance”) in 2017, and from Provenance to Proven Networks in early 2020. The various
accused products in the actions are: (1) storage and network controllers and associated software;
(2) cloud computing; and (3) network traffic management devices such as routers and switches and
associated software.

*

Judge Ellen Segal Huvelle, Judge Nathaniel M. Gorton, and Judge David C. Norton
took no part in the decision of this matter.
1

Arista Networks, Inc., Amazon.com, Inc., Amazon Web Services, Inc., Cisco
Systems, Inc., Dell Technologies, Inc. and Dell Inc. (“Dell”), EMC Corporation, Hewlett Packard
Enterprise Company, Aruba Networks, Inc., NetApp, Inc., SolarWinds Corp., and SonicWall, Inc.
2

The five asserted patents are: U.S. Patent Nos. 8,018,852 (the ‘852 patent); 8,165,024
(the ‘024 patent); 8,812,454 (the ‘454 patent); 7,450,507 (the ‘507 patent); and 7,877,786 (the ‘786
patent).

-2In opposing centralization, the patentholder principally argues that (1) common factual issues
are not involved because the asserted patents vary significantly across actions; (2) the accused
products and infringement issues vary; and (3) the anticipated consolidation of the seven Western
District of Texas actions makes centralization unnecessary. We find these arguments unpersuasive.
First, although different combinations of patents are asserted in the actions, there is substantial
overlap in the asserted patents. The claim construction issues in the Western District of Texas Dell
action overlap with all other actions on the motion. The issues concerning the ‘024 and ‘454 patents
are raised in Dell, the Eastern District of Texas Cisco action, and four other Western District of
Texas actions, and the issues concerning the ‘507 patent are raised in Dell, the Northern District of
California F5 Networks No. II action,3 and one other Western District of Texas action. Absent
centralization, duplicative claim construction proceedings on these patents will be necessary.
Second, differences 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.4 Third, the anticipated consolidation of the Western District of Texas actions is insufficient
to address the risk of duplicative proceedings and inconsistent rulings. Actions still would be
proceeding independently in the Northern District of California and the Eastern District of Texas.
And the record indicates that claim construction pretrial proceedings already are advancing without
coordination among the parties.
On the basis of the papers filed and the hearing session held,5 we find that these 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 this litigation. All actions share factual
questions involving five patents concerning data networking technology that allegedly originated
with Alcatel-Lucent and subsequently were transferred to Proven Networks. There is significant
overlap in the patents asserted in these actions, and thus, overlapping claim construction and patent
validity issues. Moreover, all actions involve common factual issues relating to the patents’ transfer
history and associated valuation, damages, and standing issues. Centralization will eliminate
duplicative discovery, prevent inconsistent pretrial rulings (particularly on the complex and
time-consuming matter of claim construction), and conserve the resources of the parties, their
counsel and the judiciary.

3

We intend to transfer F5 Networks No. II through the conditional transfer order
process. See Panel Rule 7.1(b).
4

See In re Bear Creek Tech., Inc., (‘722) Patent Litig., 858 F. Supp. 2d 1375, 1379
(J.P.M.L. 2012) (“[t]he Panel has often centralized litigation involving different products which
allegedly infringe a common patent or patents”).
5

In light of the concerns about the spread of COVID-19 virus (coronavirus), the Panel
heard oral argument by videoconference at its hearing session of September 24, 2020. See Suppl.
Notice of Hearing Session, MDL No. 2959 (J.P.M.L. Sept. 8, 2020), ECF No. 50.

-3We conclude that the Western District of Texas is an appropriate transferee district for this
litigation. Seven of the eight actions on the motion are pending in this district, and the accused
infringers in two actions have their headquarters there. Judge Alan D. Albright, who presides over
six actions, is an experienced jurist who has the ability and willingness to manage this litigation
efficiently. We are confident he will steer this litigation on a prudent course.
IT IS THEREFORE ORDERED that the action listed on Schedule A and pending outside
the Western District of Texas is transferred to the Western District of Texas and, with the consent
of that court, assigned to the Honorable Alan D. Albright for coordinated or consolidated pretrial
proceedings.

PANEL ON MULTIDISTRICT LITIGATION

Karen K. Caldwell
Chair
R. David Proctor
Matthew F. Kennelly

Catherine D. Perry

IN RE: PROVEN NETWORKS, LLC, PATENT LITIGATION

MDL No. 2959

SCHEDULE A

Eastern District of Texas
PROVEN NETWORKS, LLC v. CISCO SYSTEMS, INC., C.A. No. 2:20-00074
Western District of Texas
PROVEN NETWORKS, LLC v. AMAZON.COM, INC., ET AL., C.A. No. 1:20-00498
PROVEN NETWORKS, LLC v. DELL TECHNOLOGIES, INC., ET AL.,
C.A. No. 1:20-00710
SONICWALL, INC. v. PROVEN NETWORKS, LLC, C.A. No. 1:20-00715
PROVEN NETWORKS, LLC v. ARISTA NETWORKS, INC., C.A. No. 6:20-00281
PROVEN NETWORKS, LLC v. SOLARWINDS CORP., C.A. No. 6:20-00338
PROVEN NETWORKS, LLC v. NETAPP, INC., C.A. No. 6:20-00369
PROVEN NETWORKS, LLC v. HEWLETT PACKARD ENTERPRISE COMPANY,
ET AL., C.A. No. 6:20-00632