In re Iron Oak Techs., LLC, Patent Litig., 325 F. Supp. 3d 1371 (2018)

June 11, 2018 · United States Judicial Panel on Multidistrict Litigation · MDL No. 2835

325 F. Supp. 3d 1371

IN RE: IRON OAK TECHNOLOGIES, LLC, PATENT LITIGATION

MDL No. 2835

United States Judicial Panel on Multidistrict Litigation.

June 11, 2018

TRANSFER ORDER

MARJORIE O. RENDELL, Acting Chair

Before the Panel :^* Microsoft Corporation, an accused infringer and declaratory judgment plaintiff or intervenor in three actions, moves under 28 U.S.C. § 1407 to centralize this litigation in the Northern District of Texas. This litigation currently consists of 12 actions pending in four districts, as listed on Schedule A. Patentholder Iron Oak Technologies, LLC, supports centralization of this litigation in the Northern District of Texas. All accused infringers represent that they do not oppose Microsoft's motion.¹

At issue in this litigation is the alleged infringement of Iron Oak's U.S. Patent Nos. 5,699,275, titled "system and method for remote patching of operating code located in a mobile unit," and U.S. Patent No. 5,966,658, titled "automated selection of a communication path." The inventions in the '275 and '658 patents allegedly relate to processes used to remotely update computer operating software on computer laptops, tablets, smartphones, smart TVs, and smart printers through wired, Wi-Fi, and cellular connections to the internet.

On the basis of the papers filed and the hearing session held, 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 involve factual questions about the alleged infringement, validity, and enforceability of Iron Oak's '275 and '658 patents. Iron Oak commonly asserts that the manufacturer's accused products² directly and indirectly infringe the patents with respect to systems for remote patching or updating of operating code and automated selection of a communications path on wired, Wi-Fi, and cellular connections to the internet. Similarly, the declaratory judgment action by Microsoft seeks a declaration of noninfringement of the '275 and '658 patents as to Microsoft products, services, and technology-in particular, the Windows operating system and automatic update and connection features-which allegedly are broadly used across devices, including many made by the accused infringers.

We conclude that the Northern District of Texas is an appropriate transferee district for this litigation. Patentholder Iron Oak Technologies, LLC, and its two principals, who are the inventors of the patents in issue, are located in this district. Additionally, all parties support, or do not oppose, this district, where seven of the twelve actions are pending. Judge Barbara M.G. Lynn is an experienced transferee judge who can steer this litigation on a prudent course.

IT IS THEREFORE ORDERED that the actions listed on Schedule A and pending outside the Northern District of Texas are transferred to the Northern District of Texas and, with the consent of that court, assigned to the Honorable Barbara M.G. Lynn for coordinated or consolidated pretrial proceedings.

* Judge Sarah A. Vance and Judge Ellen Segal Huvelle took no part in the decision of this matter.

1 Acer America Corporation and Acer Incorporated (Acer); ASUSTeK Computer Inc. (ASUS); Dell Inc.; HP Inc.; Huawei Device USA, Inc., Huawei Device Co. Ltd., and Huawei Device (Dongguan) Co. Ltd. (Huawei); Fujitsu America, Inc.; Lenovo (United States) Inc. and Lenovo Holding Company, Inc. (Lenovo); Samsung Electronics America, Inc., and Samsung Electronics Company, Ltd. (Samsung); Sharp Electronics Corporation and Sharp Corporation (Sharp); Toshiba America Information Systems, Inc., and Toshiba Corporation (Toshiba); and ZTE (USA), Inc.

2 The accused products are computer laptops, tablets, smartphones, smart TVs, and smart printers allegedly manufactured and sold by Acer, ASUS, Dell, Fujitsu, HP, Huawei, Lenovo, Samsung, Sharp, Toshiba, and ZTE, and also Microsoft products, services, and technology that include an automatic update or automatic network connection feature.

SCHEDULE A

MDL No. 2835 - IN RE: IRON OAK TECHNOLOGIES, LLC, PATENT LITIGATION

District of Delaware

IRON OAK TECHNOLOGIES, LLC v. LENOVO (UNITED STATES), INC., ET AL., C.A. No. 1:17-01153

Eastern District of Texas

IRON OAK TECHNOLOGIES, LLC v. HUAWEI DEVICE USA, INC., ET AL., C.A. No. 2:17-00744

Northern District of Texas

IRON OAK TECHNOLOGIES, LLC v. FUJITSU AMERICA, INC., ET AL., C.A. No. 3:16-03319

IRON OAK TECHNOLOGIES, LLC v. TOSHIBA AMERICA, INC., ET AL., C.A. No. 3:16-03320

IRON OAK TECHNOLOGIES, LLC v. ASUSTEK COMPUTER, INC., C.A. No. 3:16-03322

IRON OAK TECHNOLOGIES, LLC v. SAMSUNG ELECTRONICS AMERICA, INC., ET AL., C.A. No. 3:17-01259

IRON OAK TECHNOLOGIES, LLC v. SHARP ELECTRONICS CORPORATION, ET AL., C.A. No. 3:17-02699

IRON OAK TECHNOLOGIES, LLC v. ZTE CORPORATION, ET AL., C.A. No. 3:17-03112

MICROSOFT CORPORATION v. IRON OAK TECHNOLOGIES, LLC, C.A. No. 3:18-00222

Western District of Texas

IRON OAK TECHNOLOGIES, LLC v. DELL INC., C.A. No. 1:17-00999

IRON OAK TECHNOLOGIES, LLC v. HP INC., C.A. No. 1:17-01068

IRON OAK TECHNOLOGIES, LLC v. ACER AMERICA CORPORATION, ET AL., C.A. No. 6:17-00143