In re Maxim Integrated Prods., Inc.

• Court: U.S. District Court — Western District of Pennsylvania
• Writing for the Court: Chief Judge Joy Flowers Conti
• Decision Date: 17 April 2015
• Docket Number: MDL No. 2354,Master Docket: Misc. No. 12-244
• Citation: In re Maxim Integrated Prods., Inc., Master Docket: Misc. No. 12-244, MDL No. 2354 (W.D. Pa. Apr 17, 2015)
• Parties: IN RE: MAXIM INTEGRATED PRODUCTS, INC. MDL No. 2354 This Document Relates to: 12-945

IN RE: MAXIM INTEGRATED PRODUCTS, INC. MDL No. 2354

This Document Relates to: 12-945

Master Docket: Misc. No. 12-244

MDL No. 2354

UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF PENNSYLVANIA

April 17, 2015

Chief Judge Joy Flowers Conti

MEMORANDUM OPINION

In this multidistrict patent infringement litigation (the "MDL"), which once involved more than twenty-five transferred cases, Branch Banking and Trust Company ("BB&T") is the only party still engaged in active litigation with Maxim Integrated Products, Inc. ("Maxim"). Pending before the court is BB&T's motion for suggestion of remand. (ECF No. 981.)¹ For the reasons set forth below, the motion will be denied.

I. Factual Background

On June 18, 2012, BB&T filed an action against Maxim in the United States District Court for the Eastern District of North Carolina seeking a declaration that the patents in suit in this MDL were not infringed and were invalid. (12-cv-945, ECF No. 1 (Branch Bank and Trust Company v. Maxim Integrated Products, Inc., 12-353 (E.D.N.C.))). The next day, Maxim filed suit against BB&T in the United States District Court for the Eastern District of Texas asserting infringement of the same patents. (Maxim Integrated Products, Inc. v. Branch Bank and Trust Company, 12-369 (E.D. Tx.)). The United States Judicial Panel on Multidistrict Litigation (the "Panel") entered a conditional transfer order transferring both cases to this court on July 2, 2012. (12-cv-945, ECF No. 9.) Maxim voluntarily dismissed the action it filed in Texas on July11, 2012, but BB&T's declaratory judgment action was transferred to this court and made part of this MDL proceeding. (12-cv-945, ECF No. 10.)

This court issued a claim construction opinion in December 2013. (ECF Nos. 742-43.) After that opinion was issued, the parties completed fact and expert discovery, and the court addressed various substantive motions. (see e.g., ECF Nos. 878, 960, and 987.) Shortly after this court issued its claim construction opinion, Maxim and numerous parties settled their claims. (see e.g., ECF Nos. 762-63, 768-70, 789, 798, 800, 821, 831, 836, 840, 844, and 861.) By November 2014, only two cases had not been settled; those cases involving JPMorgan Chase & Co. ("JPMorgan Chase") and BB&T. (ECF No. 960 at 1.) By February 2015, the dispute between BB&T and Maxim was the only case remaining. (ECF Nos. 980 and 987 at 10, 11, 13.) Two days after Maxim filed a stipulation of dismissal with respect to its claims against JPMorgan Chase, BB&T filed the instant motion for suggestion of remand. (ECF Nos. 980 and 981.)

BB&T asks this court immediately to suggest to the Panel that this case be remanded to the United States District Court for the Eastern District of North Carolina, the jurisdiction where BB&T chose to file its declaratory judgment complaint against Maxim. (ECF Nos. 981 and 982.) According to BB&T, immediate remand will ensure maximum judicial efficiency because it will avoid duplicative efforts with respect to addressing substantive issues during Daubert and summary judgment motions, as well as at trial. (ECF No. 982 at 5-7; ECF No. 998 at 2.) BB&T insists that remand is appropriate because its case is the only case transferred to this court by the Panel as part of this MDL proceeding that is still pending, obviating the need for further coordinated proceedings, and because remand will give BB&T the benefit of litigating in its chosen forum. (ECF No. 982 at 7-8; ECF No. 998 at 3.)

Maxim opposes remand at this juncture because this court has gained particular experience with the issues being litigating in this matter, making it more efficient for this court to resolve all pretrial matters before sending the case back to the district court in North Carolina for trial. (ECF No. 995 at 2.) Maxim posits that BB&T seeks remand as a matter of strategy, not efficiency, based upon BB&T's dissatisfaction with this court's rulings to date. (Id. at 2.)

II. Legal Standards

The Panel is authorized to transfer actions to a single district court for "coordinated or consolidated pretrial proceedings... upon its determination that transfers for such proceedings will be for the convenience of parties and witnesses and will promote the just and efficient conduct of such actions." 28 U.S.C. § 1407. The phrase "coordinated or consolidated" is to be broadly interpreted. Lexecon Inc. v. Milberg Weiss Bershad Hynes & Lerach, 523 U.S. 26, 33-34 (1998). "Each action so transferred shall be remanded by the panel at or before the conclusion of such pretrial proceedings to the district from which it was transferred unless it shall have been previously terminated." 28 U.S.C. § 1407. Typically, the transferee judge recommends remand of an action to the transferor court by filing a suggestion of remand with the Panel. Rules of Procedure of the United States Judicial Panel on Multidistrict Litigation ("Panel Rules"), Rule 10.1(b). The Panel is reluctant to order remand of a transferred action absent suggestion of the transferee judge. Panel Rules, Rule 10.3(a); David F. Herr, Multidistrict Litigation Manual, §10:7 (2014).

The Panel gives "great weight" to the transferee judge's determination that remand of a particular action at a particular time is appropriate because the transferee judge supervises the day-to-day pretrial proceedings, has become familiar with the issues, and is in the best position to determine the future course of the litigation. In re Am. Airlines, Inc., 162 F.Supp.2d 693, 694 (Jud.Pan.Mult.Lit. 2001) (Panel remanding case where transferee court issued suggestion of remand); In re Air Crash Near Nantucket Island, 162 F.Supp.2d 694, 695 (Jud.Pan.Mult.Lit. 2001) (Panel refusing to remand case where transferee court refused to issue suggestion of remand); In re Evergreen Valley Project Litig., 435 F.Supp. 923, 924 (Jud.Pan.Mult.Lit. 1977) (Panel remanding one case where transferee court suggested remand of that case, but not of three other cases); In re Holiday Magic Sec. and Antitrust Litig., 433 F.Supp. 1125, 1126 (Jud.Pan.Mult.Lit. 1977) (Panel refusing to remand case where transferee court had not issued suggestion of remand; noting transferee court's superior position to decide remand); In re IBM Peripheral EDP Devices Antitrust Litig., 407 F.Supp. 254, 255-56 (Jud.Pan.Mult.Lit. 1976) (Panel remanding case where transferee court issued suggestion of remand; noting transferee court's "special vantage point" and "unique position" to decide when to remand cases).

Where all pretrial proceedings have been concluded in an MDL case, the transferee court must remand the cases that have not been terminated to their transferor courts. Lexecon, 523 U.S. at 34-35; In re Patenaude, 210 F.3d 135, 142 (3d Cir. 2000). Where, however, remand is sought prior to the conclusion of pretrial proceedings, the transferee court and the Panel retain discretion to decide whether remand is appropriate. In re Wilson, 451 F.3d 161, 172-73 (3d Cir. 2006); Patenaude, 210 F.3d at 145. All judicial proceedings before trial are pretrial proceedings. Patenaude, 210 F.3d at 144. The Panel requires a movant to demonstrategood cause in order to remand an action prior to the completion of pretrial proceedings. In re South Central States Bakery Products Antitrust Litig., 462 F.Supp. 388, 390 (Jud.Pan.Mult.Lit. 1978) (citing In re CBS Color Tube Patent Litig., 342 F.Supp. 1403, 1405 (Jud.Pan.Mult.Lit. 1972)); see In re Swisher Hygine, Inc., No. 12-2384, 2014 WL 3845040, at *1 (W.D.N.C. Aug. 5, 2014); Hildes v. Arthur Andersen LLP, No. 08-0008, 2014 WL 1571330, at *4 (S.D. Cal. Apr. 16, 2014); Diaz v. Ameriquest Mortg. Comp., No. 05-7097, 2014 WL 26265, at *2 (N.D. Ill. Jan. 2, 2014); Wang v. The Bear Stearns Companies, No. 11-5643, 2013 WL 3479507, at *3 (S.D.N.Y. Jul. 10, 2013).

III. Discussion

Based upon the foregoing standards and authorities, the motion for suggestion of remand will be denied.

As an initial matter, BB&T fails to acknowledge that, because pretrial proceedings have not concluded, it has the burden to demonstrate good cause to secure remand of its case to the North Carolina district court. South Central States Bakery Products, 462 F.Supp. at 390; CBS Color Tube, 342 F.Supp. at 1405; Swisher Hygine, 2014 WL 3845040, at *1 (W.D.N.C. Aug. 5, 2014) (setting forth the burden of proof); Diaz, 2014 WL 26265, at *2. Fact and expert discovery are completed in this MDL case. Motions to challenge the qualifications and testimony of the proffered expert witnesses are not yet filed. The parties indicated that summary judgment motions will likely be filed after Daubert proceedings are concluded. This court, of course, cannot anticipate what the outcome of those proceedings will be. It is not, however, unreasonable to presume that the issues to be tried to a jury will be affected by the rulings on these matters. This case is not trial-ready, and, therefore, this court can only suggest remand if BB&T demonstrates good cause. BB&T proffered no evidence orargument in support of a finding of good cause. Upon independent review of the record, this court cannot find that good cause presently exists.

There is no dispute that the case involving BB&T and Maxim is the only active case remaining in this MDL proceeding. BB&T's contention that its case must be remanded for this reason alone is, however, contrary to controlling case law. The Court of Appeals for the Third Circuit and the Panel have held that "coordinated" proceedings can take place in the transferee court even if only one case remains active in the MDL. In re Wilson, 451 F.3d 161, 172-73 (3d Cir. 2006); In re Patenaude, 210 F.3d 135, 142 (3d Cir. 2000); In re Holiday Magic Sec. and Antitrust Litig., 433 F.Supp. 1125, 1126 (Jud.Pan.Mult.Lit. 1977); In re CBS Color Tube Patent Litig., 342 F.Supp. 1403, 1405 (Jud.Pan.Mult.Lit. 1972).

The Court of Appeals for the Third Circuit "observed that 'a proceeding that relates only to a single individual's case or claim can...