Global Touch Solutions, LLC v. Toshiba Corp.

109 F.Supp.3d 882

GLOBAL TOUCH SOLUTIONS, LLC, Plaintiff,

v.TOSHIBA CORPORATION and Toshiba America Information Systems, Inc., Defendants.

Global Touch Solutions, LLC, Plaintiff,

v.Vizio, Inc., Defendant.

Global Touch Solutions, LLC, Plaintiff,

v.Apple, Inc., Defendant.

Global Touch Solutions, LLC, Plaintiff,

v.Motorola Mobility LCC, Defendant.

Global Touch Solutions, LLC, Plaintiff,

v.Microsoft Corporation and Nokia Inc., Defendants.

Civil Nos. 2:14CV346

2:14CV391

2:14CV347

2:15CV17

2:14CV390.

United States District Court, E.D. Virginia, Norfolk Division.

Signed June 15, 2015.

Alan A. Wright, for Plaintiff.

Dabney J. Carr, IV, Adam M. Greenfield, Gabriel S. Gross, James R. Bender, Jennifer M. Halbleib, Matthew J. Moore, for Defendant Apple, Inc.

John P. Corrado, Charlie Chi–Huan Lyu, Dale M. Heist, Daniel J. Goettle, John F. Murphy, for Defendants Microsoft Corporation and Nokia, Inc.

Phillip E. Morton, Joseph M. Drayton, Michael G. Rhodes, Rose S. Whelan, for Defendant Motorola Mobility, Inc.

Adrian M. Pruetz, Charles C. Koole, Dan Liu, Jack Rephan, Mieke K. Malmberg, for Defendant Vizio, Inc.

Stephen E. Noona, Christopher M. Kurpinski, Doris J. Hines, Hala S. Mourad, Luke J. McCammon, for Defendants Toshiba Corporation and Toshiba America Information Systems, Inc.

OPINION AND ORDER

MARK S. DAVIS, District Judge.

I. Introductory Statement

The joinder provision of the America Invents Act ("AIA") has had an evident impact on the procedural handling of patent infringement actions in scenarios where a plaintiff seeks to hold multiple defendants liable based on similarly designed consumer products. 35 U.S.C. § 299. To the extent joinder of alleged infringers was previously permitted in a patent case under Rule 20 of the Federal Rules of Civil Procedure, the AIA eliminated a patent holder's ability to file a single civil action against multiple industry competitors allegedly responsible for violating the same patent or family of patents. Moreover, once cases involving various companies' similar accused products are separately filed, the AIA expressly precludes consolidation "for trial." Id.; see In re: Maxim Integrated Products, Inc., Patent Litigation, 867 F.Supp.2d 1333, 1335 (J.P.M.L.2012) ("[T]he AIA changed the landscape of patent litigation—particularly the filing of actions against multiple unrelated defendants and the right to a separate trial when defendants are only accused of violating the same patent."); see alsoH.R. REP. 112–98, at 54, reprinted in 2011 U.S.C.C.A.N. 67, 85 ("The [AIA] also addresses problems occasioned by the joinder of defendants (sometimes numbering in the dozens) who have tenuous connections to the underlying disputes in patent infringement suits.").

While the practical effects of the AIA may still be unsettled in light of its relative infancy, it appears that the serial filing of separate patent infringement actions in the same court, on or about the same date, against different corporate defendants, has become the new normal in patent infringement litigation. See Norman IP Holdings, LLC v. Lexmark Int'l, Inc., No. 6:12cv508, 2012 WL 3307942, at *4 (E.D.Tex. Aug. 10, 2012) ("In response to the AIA's joinder provision, plaintiffs now serially file multiple single-defendant (or defendant group) cases involving the same underlying patents."). Such serial filing "presents administrative challenges for the Court and, left unchecked, wastes judicial resources by requiring common issues to be addressed individually for each case." Id. One of the ways in which district courts have sought to temper the waste of judicial resources is by consolidating associated patent actions for pretrial matters, either invoking Federal Rule of Civil Procedure 42 for cases pending within a single district, or MDL cross-district consolidation procedures in cases pending in multiple districts. See DietGoal Innovations LLC v. Wegmans Food Markets, Inc., No. 2:13cv154, 2014 WL 2561222, at 2 (E.D.Va. June 6, 2014) (denying a motion to sever one patent case from several others after the district court had entered a sua sponte order consolidating the cases under Rule 42 for all pretrial matters); Cellport Systems, Inc. v. BMW of North America, L.L.C., No. 14–cv–1631, 2014 WL 6910293, at *1–2 (D.Colo. Dec. 9, 2014) ("Courts have held that [the AIA joinder provision] does not prevent the consolidation of cases against accused infringers for pretrial matters." (emphasis added)); In re: Bear Creek Techs., Inc. ('722) Patent Litig., 858 F.Supp.2d 1375, 1378 (J.P.M.L.2012) ("We find that the America Invents Act does not alter our authority to order pretrial centralization of this litigation."); In re: Maxim Integrated Products, 867 F.Supp.2d at 1335 (reiterating that while MDL consolidation remains permissible post-AIA, "the AIA's right to separate trials should be taken into account when making the decision to centralize a given litigation, inasmuch as the AIA is the new reality in patent litigation and its right to separate trials could impact the Panel's calculus regarding whether centralization benefits ‘the convenience of parties and witnesses' and ‘will promote the just and efficient conduct’ of the litigation." (quoting 28 U.S.C. § 1407(a) )).

The filing of one or more motions seeking a discretionary transfer of venue in associated patent actions raises additional concerns, as the various defendants, witnesses, and sources of proof relevant to separately filed patent infringement actions will invariably be found in different districts. Balancing the complex and competing factors raised in such motions presents difficult questions, which in the pending cases include: (1) Does it serve justice and economy to split up five cases with similar allegations of infringement when at least three, and as many as eight, of the same patents are asserted against the same types of consumer products (laptops, tablets, etc.) sold by industry competitors? (2) Does refusal to transfer such cases in an effort to keep them together create an incentive for plaintiffs to "manufacture venue" by filing numerous similar actions in the same court, around the same time, in order to increase the pressure on the Court to reject any of the defendants' attempts to transfer an individual case? (3) Does transferring all of the similar cases to a far "better" forum, which necessarily cannot be the "best" forum as to each individual case, best satisfy the convenience and justice factors, or does it allow defendants to forum shop? (4) Does it comport with justice to require a plaintiff who filed multiple separate actions, as required by the AIA, to not only leave its chosen forum as to those cases with the strongest transfer arguments, but to have to simultaneously litigate multiple (similar) patent cases on opposite coasts of the United States?

Grappling with these competing considerations in light of the circumstances presented in each of the five cases pending before this Court, some of which present stronger arguments for transfer than others, necessarily requires the Court to reach an imperfect resolution. However, although less than perfect, this Court's resolution of the motions before it best comports with the § 1404(a) convenience and justice factors.

II. Factual and Procedural Background

Against such backdrop, currently before the Court are five separate patent infringement actions filed by plaintiff Global Touch Solutions, LLC, ("Plaintiff" or "GTS"). The defendant(s) in each case are: (1) Toshiba Corporation ("Toshiba") and its American subsidiary Toshiba American Information Systems, Inc. ("TAIS"); (2) Vizio, Inc. ("Vizio"); (3) Apple, Inc. ("Apple"); (4) Motorola Mobility LLC ("Motorola"); and (5) Microsoft Corporation ("Microsoft") and its subsidiary Nokia Inc. ("Nokia").¹ These five separate civil cases were initially randomly assigned to four different district judges within this district. However, because all five cases involve similar allegations, and share common patents and common asserted claims, the four cases assigned to other judges of this Court were reassigned to the undersigned judge (to whom the first case was assigned) for the purposes of economy, consistency, and fairness.

Although the number and identity of the patents asserted in the different actions varies somewhat, four of the five cases have at least five patents in common.² The defendant(s) in each of the five cases filed a motion seeking transfer to the Northern District of California, with one defendant alternatively seeking transfer to the Central District of California. Plaintiff GTS opposes transfer in each of the five cases, arguing in the Toshiba/TAIS Action that such case could not have originally been filed in the Northern District of California, and arguing in all cases that the named defendant(s) fails to demonstrate that the relevant convenience and justice factors justify a transfer of venue.

Each motion to transfer in each of the five separately filed cases must be analyzed on its own merits in order to determine: (1) whether such action could have been filed in the putative transferee forum; and (2) whether transfer to such permissible transferee forum would substantially advance interests of convenience and justice. Although it is evident that each motion to transfer must stand on its own, Plaintiff has commendably acknowledged that if the first test, the threshold test, is met in each of the five cases pending before this Court, the Court must necessarily consider keeping the cases together to promote judicial economy, convenience of the witnesses and parties (to include Plaintiff ), and to lessen the risk of inconsistent results. 2:14cv346, Hearing Tr. 38–40, ECF No. 57. Defendants likewise contend in their Court filings that keeping the cases together is preferable. The motivation to keep the cases together appears particularly acute when, as here, the cases involve the same patents, the same patent claims, the same types of allegedly infringing consumer products, and...