Blue Spike, LLC v. Vizio, Inc.

Filing 13

ORDER DENYING TRANSFER re: pldg. (9 in CAC/8:17-cv-01172, 8 in DE/1:17-cv-00928, 37 in MDL No. 2794, 8 in TXE/6:17-cv-00016, 12 in TXE/6:17-cv-00063, 9 in TXE/6:17-cv-00096, 8 in TXE/6:17- cv-00099, 8 in TXE/6:17-cv-00138, 8 in TXE/6:17-cv-00175), ( 1 in MDL No. 2794) The motion to transfer, pursuant to 28 U.S.C. 1407, is DENIEDSigned by Judge Sarah S. Vance, Chair, PANEL ON MULTIDISTRICT LITIGATION, on 10/4/2017. Associated Cases: MDL No. 2794, CAC/8:17-cv-01172, CAN/5:17-cv-04780, DE/1:17-cv-00928, TXE/6:17-cv-00016, TXE/6:17-cv-00063, TXE/6:17-cv-00096, TXE/6:17-cv-00099, TXE/6:17-cv-00138, TXE/6:17-cv-00175 (TB)

UNITED STATES JUDICIAL PANEL
on
MULTIDISTRICT LITIGATION

IN RE: BLUE SPIKE, LLC, PATENT LITIGATION

MDL No. 2794

ORDER DENYING TRANSFER

Before the Panel: Patentholder Blue Spike, LLC, moves under 28 U.S.C. § 1407 to
centralize pretrial proceedings in this patent litigation in the Eastern District of Texas. This litigation
currently consists of nine actions pending in four districts, as listed on Schedule A.1 Defendants2
submitted a joint brief expressing their opposition to centralization. Should we decide to centralize
this litigation, defendants argue that a Northern District of California or a Central District of
California transferee forum is appropriate.
On the basis of the papers filed and hearing session held, we are not persuaded that
centralization would serve the convenience of the parties and witnesses or further the just and
efficient conduct of this litigation. All actions involve some common facts surrounding the alleged
infringement of a total of 34 Blue Spike patents, which share a common inventor in Blue Spike
founder Scott Moskowitz. Despite any facts shared among the actions, Blue Spike has failed to
demonstrate “that there is enough commonality to make centralization necessary or even
advantageous.” In re: Charles R. Bobo Patent Litig., 829 F. Supp. 2d 1374, 1375 (J.P.M.L. 2011).
Several considerations weigh against centralization here. Defendants’ accused products vary
considerably and include: televisions (VIZIO, LeMall, Toshiba), tablet computers (NVIDIA, Nook
Digital), personal computers (Toshiba), routers (Juniper), watermarking software (MarkAny), virtual
currency (Razer), smartphones (LeMall), telephone servers (Toshiba), streaming media players
(Roku) and digital rewards programs (Razer). Further, the degree of overlap among the 34 asserted
patents varies widely among the cases. In its complaints, Blue Spike subdivides the patents into the
following categories: secure server, trusted transaction, watermarking, packet transfer, open access,
ASLR,3 and product key patents. Four secure server patents and two trusted transactions patents are
at issue in eight and seven cases, respectively; both types of patents are asserted in six cases. The

1

The motion for centralization initially included fourteen actions, but five actions were dismissed
during the pendency of the motion.
2

Roku, Inc., Nook Digital, LLC, Juniper Networks, Inc., Razer USA Ltd., Vizio, Inc., Le
Technology, Inc., LeMall Corp., NVIDIA Corporation, Toshiba America Information Systems, Inc.,
and Toshiba Corp.
3

ASLR stands for Address Space Layout Randomization. According to plaintiff, it is a security
technique that protects software by shuffling it in computer memory.

-2watermarking patents (sixteen patents, at issue in four cases) and ASLR patents (two patents, at issue
in four cases) are not asserted in the same case. Ten asserted patents fall into the remaining
categories: the Packet Transfer (five patents, two cases), Open Access (three patents, three cases),
and Product Key Patents (two patents, one case). Only one case, the Eastern District of Texas
Juniper Networks action, involves the infringement of patents in all three of these categories.
Blue Spike’s litigation history also supports the conclusion that centralization may thwart the
orderly resolution of the cases. Since the start of 2016, Blue Spike reportedly has brought 33 actions
for patent infringement. Of those 33 cases, only nine actions are still pending. Five actions were
dismissed during the pendency of Blue Spike’s motion for centralization. It appears that only three
of the 34 asserted patents have had claims construed – the two ASLR patents and the ‘213
watermarking patents – and the cases in which claim construction has occurred are now closed.4 We
often view the litigation history of a group of patents as a key indicator of whether cases before us
will require significant judicial intervention and thus merit centralization.5 Here, since last year, less
than a third of all cases Blue Spike filed remain pending, and we have not been notified of any
potential tag-along actions. Additionally, all but one of the cases pending in this litigation were
originally filed in the Eastern District of Texas, yet only three of those cases were consolidated in
that district, which suggests that the involved judges saw little advantage to having all Blue Spike
cases proceeding on a common schedule before a single judge.
All responding defendants, which coordinated to file a single brief in response to Blue
Spike’s Section 1407 motion, represented at oral argument that they would work together with
plaintiff to ensure the efficient conduct of this litigation. Defendants also specifically committed at

4

See Blue Spike, LLC v. Toshiba America, Inc. et al., E.D. Texas, Case No. 6:16-cv-430, doc.
46 (June 28, 2017) (construing certain claims of Blue Spike ‘569 and ‘719 ASLR patents; case
dismissed on 7/21/17); Blue Spike, LLC v. Verimatrix, E.D. Texas, 6:17-cv-329, doc. 161 (July 6,
2017) (construing certain claims of the ‘213 watermarking patent against defendant Media Science
Inc.; case dismissed on 8/17/17) and Blue Spike, LLC v. Huawei, E.D. Texas, Case No. 6:13-cv-679,
doc. 194 (May 16, 2016) (construing certain Blue Spike ‘569 ASLR patent claims; case dismissed
11/22/16).
5

See In re: ArrivalStar Pat. Litig., 802 F. Supp. 2d 1378, 1379 (J.P.M.L. 2011) (denying
centralization of nineteen actions in seven districts because it “may thwart the orderly resolution of
these patent cases. ArrivalStar has 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 judicial attention.”); see also In re: Genetic Techs. Ltd.
(‘179) Pat. Litig., 883 F. Supp. 2d 1337, 1337–38 (J.P.M.L.2012) (denying centralization because,
inter alia, the patent’s litigation history suggested that most actions did not require significant
judicial intervention and were dismissed through settlement or other means “within a relatively short
period of time”); In re: Brandywine Comms. Techs., LLC Pat. Litig., 959 F. Supp. 2d 1377 (J.P.M.L.
2013) (denying centralization where more than half of the defendants had settled and “actions are
being litigated in a manner that is likely to lead to their resolution”).

-3oral argument to conduct a joint deposition of Blue Spike founder Scott Moskowitz. The involved
counsel and judges can coordinate to reduce any other duplicative discovery or to sequence the
interpretation of any common claim terms. Several other alternatives to formal centralization also
are available to the parties, should the need arise. See, e.g., In re: Eli Lilly and Co. (Cephalexin
Monohydrate) Pat. Litig., 446 F. Supp. 242, 244 (J.P.M.L. 1978); see also MANUAL FOR COMPLEX
LITIGATION, FOURTH § 20.14 (2004).
IT IS THEREFORE ORDERED that the motion for centralization of the actions listed on
Schedule A is denied.

PANEL ON MULTIDISTRICT LITIGATION

Sarah S. Vance
Chair
Marjorie O. Rendell
Lewis A. Kaplan
R. David Proctor

Charles R. Breyer
Ellen Segal Huvelle
Catherine D. Perry

IN RE: BLUE SPIKE, LLC, PATENT LITIGATION

MDL No. 2794

SCHEDULE A

Central District of California
BLUE SPIKE, LLC v. VIZIO, INC., C.A. No. 8:17!1172
Northern District of California
BLUE SPIKE, LLC v. TOSHIBA AMERICA INFORMATION SYSTEMS, INC.,
ET AL., C.A. No. 5:17!4780
District of Delaware
BLUE SPIKE, LLC v. ROKU, INC., C.A. No. 1:17!928
Eastern District of Texas
BLUE SPIKE, LLC v. JUNIPER NETWORKS, INC., C.A. No. 6:17!16
BLUE SPIKE, LLC v. LEMALL CORP., ET AL., C.A. No. 6:17!63
BLUE SPIKE, LLC v. NVIDIA CORPORATION, C.A. No. 6:17!96
BLUE SPIKE, LLC v. RAZER USA LTD., C.A. No. 6:17!99
BLUE SPIKE, LLC v. MARKANY, INC., C.A. No. 6:17!138
BLUE SPIKE, LLC v. BARNES & NOBLE, INC., ET AL., C.A. No. 6:17!175