Protegrity Corp v. Informatica Corporation

Filing 18

TRANSFER ORDER re: pldg. ( 1 in MDL No. 2600) Transferring 13 action(s) to Judge James Donato in the N.D. California.Signed by Judge Sarah S. Vance, Chair, PANEL ON MULTIDISTRIC T LITIGATION, on 2/6/2015. Associated Cases: MDL No. 2600, CAN/3:14-cv-02588, CAN/3:14-cv-03151, CAN/3:14-cv-03423, CAN/3:14-cv-04283, CAS/3:14-cv-00075, CT/3:13-cv-01383, CT/3:13-cv-01384, CT/3:13-cv-01409, CT/3:13-cv-01484, CT/3:13-cv-01781, CT/3:13-cv-01802, CT/3:14-cv-01076, CT/3:14-cv-01427, OKN/4:14-cv-00445, OR/6:14-cv-00476, TXN/3:14-cv-02727, TXN/3:14-cv-02990 (DP)

UNITED STATES JUDICIAL PANEL
on
MULTIDISTRICT LITIGATION

IN RE: PROTEGRITY CORPORATION AND
PROTEGRITY USA, INC., PATENT LITIGATION

MDL No. 2600

TRANSFER ORDER

Before the Panel:* Patentholders Protegrity Corp. and Protegrity USA, Inc., (collectively
Protegrity) move under 28 U.S.C. § 1407 to centralize pretrial proceedings in this patent litigation
in the District of Connecticut. Protegrity seeks centralization only for coordinated or consolidated
Markman hearings. This litigation consists of seventeen actions, pending in six districts, as listed
on Schedule A.1
The parties’ positions on Protegrity’s motion vary. Nine accused infringers2 oppose
centralization and, alternatively suggest that we select the Northern District of California as the
transferee district. Two accused infringers (TokenEx, LLC and AJB Software Design, Inc.) take no
position on centralization, but if the actions are centralized, they suggest selecting the Northern
District of California as the transferee district. Finally, three accused infringers (Trustwave
Holdings, Inc., PerspecSys USA, Inc., and Epicor Software Corp.) support centralization in either
the District of Connecticut or the Northern District of California, but only if the litigation is not
stayed pending potential Covered Business Patent review by the Patent Trial and Appeal Board.3

*

Judge Lewis A. Kaplan did not participate in the decision of this matter.

1

The motion for centralization initially included twenty actions, but Protegrity requested one
action (the District of Connecticut Gazzang action) be removed as unrelated, and two other
actions (District of Connecticut Paymetric and TokenEx) were dismissed. Also, the parties have
notified the Panel of an additional related action pending in the District of Connecticut; this
action, and any other related action, is a potential tag-along action. See Panel Rules 1.1(h), 7.1
and 7.2.
2

Dataguise, Inc.; Corduro, Inc.; IPS Group, Inc.; Shift4 Corp.; Skyhigh Networks, Inc.;
TransFirst LLC; Prime Factors, Inc.; Square, Inc.; and Informatica Corp.
3

See Informatica Corp. v. Protegrity Corp., CBM2015-00010 (P.T.A.B. Oct. 14, 2014);
Informatica Corp. v. Protegrity Corp., CBM2015-00021 (P.T.A.B. Nov. 6, 2014); Square, Inc.
v. Protegrity Corp., CBM2014-00182 (P.T.A.B. Aug. 29, 2014); Square, Inc. v. Protegrity
Corp., CBM2015-00014 (P.T.A.B. Oct. 24, 2014); Epicor Software Corp. v. Protegrity Corp.,
CBM2015-00002 (P.T.A.B. Oct. 1, 2014); Epicor Software Corp. v. Protegrity Corp.,
CBM2015-00006 (P.T.A.B. Oct. 7, 2014); Epicor Software Corp. v. Protegrity Corp.,

-2At issue in this litigation are two patents owned by Protegrity: U.S. Patent Nos. 6,321,201
(’201 patent) and 8,402,281 (’281 patent). The patents relate to a method and apparatus for
protecting data within databases.
On the basis of the papers filed and hearing session held, we find that these seventeen actions
involve common questions of fact, and that centralization in the Northern District of California will
serve the convenience of the parties and witnesses and promote the just and efficient conduct of the
litigation. All actions involve factual questions about the alleged infringement, validity and
enforceability of the ‘201 and ‘281 patents. Centralization will eliminate duplicative discovery and
prevent inconsistent pretrial rulings (particularly on issues of staying the litigation during possible
Covered Business Patent review, claim construction and whether the patents involve unpatentable
subject matter), as well as conserve the resources of the parties, their counsel and the judiciary.
The accused infringers that oppose centralization offer several arguments against
centralization, all of which fail to convince us that centralization of this litigation is inappropriate.
These parties argue that: centralization is premature because infringement contentions have not been
exchanged in certain actions, the actions involve different accused infringing products and thus
differing fact questions, and efficiency will not be served by centralization, given the pendency of
certain dispositive motions. While infringement contentions have not been exchanged in most
actions, Protegrity asserts that independent claims in the ‘201 patent (Claims 1 and 8) and ‘281
patent (Claims 1, 17, 33, and 47) will be the primary focus of the litigation. That the actions involve
differing accused infringing products has not been an impediment to centralization in past litigation
involving common patents.4 Further, centralization will eliminate the potential for inconsistent
rulings on several pending motions to dismiss willful or indirect infringement allegations and the two
pending motions to dismiss based on unpatentable subject matter.
The opponents of centralization also argue that the history of settlements of these actions
involving the Protegrity patents weighs in favor of denying centralization, citing our decision in In
re: Arrivalstar Patent Litigation, 802 F. Supp. 2d 1378. In re: ArrivalStar is readily distinguishable
from this litigation, as the patentholder opposed centralization and noted that it had “brought nearly
100 actions since it began bringing infringement suits in various districts across the country
approximately seven years ago, and none of the actions thus far appear to have required significant

CBM2015-00030 (P.T.A.B. Nov. 25, 2014).
4

See In re: Bear Creek Pat. Litig., 858 F. Supp. 2d 1375, 1379-80 (J.P.M.L. 2012) (“The
Panel has often centralized litigation involving different products which allegedly infringe a
common patent or patents. . . while the facts surrounding infringement in this litigation may vary
from defendant to defendant, the actions will share substantial background questions of fact
concerning the numerous anticipated arguments regarding the validity and enforceability of the
‘722 patent and implicating factual issues concerning such matters as the technology underlying
the patent, prior art, priority (such as the contention that the patent was abandoned in 2003)
and/or claim construction.”).

-3judicial attention.” Id. at 1379. Here, Protegrity spent years litigating against several defendants in
the District of Connecticut. These now-closed cases needed significant judicial attention to address
issues of claim construction and attacks on patent validity and required the appointment of a
technical advisor at substantial cost to the parties. One of the prior actions even proceeded through
the first week of trial.
We deny Protegrity’s request to limit the centralized proceedings to claim construction. Our
typical approach has been to decline to dictate the particular manner or course that pretrial
proceedings should take. See, e.g., In re: Cyclobenzaprine Hydrochloride Extended-Release Capsule
Pat. Litig., 657 F. Supp. 2d 1375, 1376 (J.P.M.L. 2009) (“Our decision to centralize these actions
in no way dictates or even suggests the particular manner or course of such proceedings; consistent
with our typical practice, we leave those determinations to the transferee judge.”). As Protegrity has
failed to provide us with a good reason to deviate from this approach, we dedicate the determination
of the exact structure of the MDL proceedings to the sound judgment of transferee judge.
We are of the view that the Northern District of California is the most appropriate transferee
district for pretrial proceedings in this litigation. Several accused infringers are located in or near
this district. Further, the Northern District of California is a Patent Pilot Program Court that has
adopted local Patent Rules, and the district is highly familiar with complex technological patent
litigation.
IT IS THEREFORE ORDERED that the actions listed on Schedule A and pending outside
the Northern District of California are transferred to the Northern District of California and, with the
consent of that court, assigned to the Honorable James Donato for coordinated or consolidated
pretrial proceedings.

PANEL ON MULTIDISTRICT LITIGATION

Sarah S. Vance
Chair
Marjorie O. Rendell
Ellen Segal Huvelle
Catherine D. Perry

Charles R. Breyer
R. David Proctor

IN RE: PROTEGRITY CORPORATION AND
PROTEGRITY USA, INC., PATENT LITIGATION

MDL No. 2600

SCHEDULE A

Northern District of California
PROTEGRITY CORP. v. INFORMATICA CORP., C.A. No. 3:14!02588
SKYHIGH NETWORKS, INC. v. PROTEGRITY CORP., C.A. No. 3:14!03151
SQUARE, INC. v. PROTEGRITY CORP., C.A. No. 3:14!03423
PROTEGRITY CORP. v. DATAGUISE, INC., C.A. No. 3:14!04283
Southern District of California
IPS GROUP, INC. v. PROTEGRITY CORP., C.A. No. 3:14!00075
District of Connecticut
PROTEGRITY CORP. v. PERSPECSYS USA, INC., C.A. No. 3:13!01383
PROTEGRITY CORP. v. PRIME FACTORS, INC., C.A. No. 3:13!01384
PROTEGRITY CORP. v. TRUSTWAVE HOLDINGS, INC., C.A. No. 3:13!01409
PROTEGRITY CORP. v. AJB SOFTWARE DESIGN, INC., C.A. No. 3:13!01484
PROTEGRITY CORP. v. EPICOR SOFTWARE CORP., C.A. No. 3:13!01781
PROTEGRITY CORP. v. SHIFT4 CORP., C.A. No. 3:13!01802
PROTEGRITY CORP., ET AL. v. CORDURO, INC., C.A. No. 3:14!01076
SHIFT4 CORPORATION v. PROTEGRITY CORP., C.A. No. 3:14!01427
Northern District of Oklahoma
TOKENEX, LLC v. PROTEGRITY CORP., C.A. No. 4:14!00445
District of Oregon
PRIME FACTORS, INC. v. PROTEGRITY USA, INC., C.A. No. 6:14!00476
Northern District of Texas
TRANSFIRST, LLC v. PROTEGRITY CORP., ET AL., C.A. No. 3:14!02727
CORDURO, INC. v. PROTEGRITY CORP., ET AL., C.A. No. 3:14!02990