IN RE: Industrial Print Technologies, LLC, Patent Litigation

UNITED STATES JUDICIAL PANEL
on
MULTIDISTRICT LITIGATION
IN RE: INDUSTRIAL PRINT TECHNOLOGIES, LLC,
PATENT LITIGATION MDL No. 2614
TRANSFER ORDER
Before the Panel: Defendants Hewlett Packard Company (HP) and O’Neil Data Systems,
Inc. move under 28 U.S.C. § 1407 to centralize this litigation in the Southern District of New York
or, alternatively, the Northern District of Texas. This litigation currently consists of ten actions
pending in six districts, as listed on Schedules A and B. The actions involve patented technology
used in large-scale commercial printers and, in particular, whether HP, HP customers, or various
Canon entities have engaged in conduct that infringes on the patents or otherwise violates the patent1
and licensing rights held by Industrial Print Technologies, LLC (IPT); Tesseron Ltd.; and Forrest P.
Gauthier (collectively, the patent holders). Seven of the ten actions involve HP’s accused printing2
presses; two concern Canon’s accused Océ printing systems; and one is a contract action between
Canon Inc., Canon U.S.A., and the patent holders as to Canon Inc.’s alleged rights to sublicense the
patents at issue to Canon Inc. affiliates under a 2005 license agreement.
Four defendants that allegedly use the accused HP products – Cenveo, Inc.; Fort Dearborn
Company; Quad/Graphics, Inc.; and Vistaprint USA, Inc.– join the motion to centralize all ten
actions in the Southern District of New York. IPT, Tesseron, and Gauthier support centralization
of the seven actions that involve HP (the Schedule A actions), but oppose inclusion of the three
Canon/Océ actions (the Schedule B actions). They also contend that the Eastern District of Texas
is the appropriate transferee court. Canon U.S.A., Canon Solutions America, and Océ take no
position on centralization of the HP actions, but oppose inclusion of any Canon/Océ actions.
Alternatively, they propose centralization in the Southern District of New York, but still to the
Canon Inc., Canon U.S.A., Inc., Canon Solutions America, Inc., and two Océ subsidiaries1
(Océ N.V. and Océ North America, Inc.).
The patents at issue, which collectively are referred to as the “Gauthier” patents (after the2
last name of the inventor or lead inventor), fall into two families: (1) variable data printing (VDP)
patents, which focus on data usage optimization to facilitate rapid processing of documents with
variable data fields; and (2) inkjet synchronization patents, which focus on synchronization of
multiple inkjet printheads within an inkjet printing press. The VDP patents are U.S. Patent Nos.
5,729,665 (‘665 patent), 5,937,153 (‘153 patent), 6,381,028 (‘028 patent), 6,771,387 (‘387 patent),
7,274,479 (‘479 patent), and 7,333,233 (‘233 patent). The inkjet synchronization patents are U.S.
Patent Nos. 6,027,195 (‘195 patent), 6,145,946, (‘946 patent), and 6,493,106 (‘106 patent).
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exclusion of the Canon Inc. contract action. The parent company, Canon Inc., also opposes inclusion
of the contract action under any circumstances.
All parties agree, or do not dispute, that centralization of at least the seven HP actions is
warranted, based on the overlap in asserted patents and accused products and HP’s status as a
common defendant in those actions. Indeed, six of the seven HP actions assert Gauthier patents that
all fall within a single patent family, the variable data printing patents, and HP Inkjet web presses
are at issue in all seven actions.
The parties’ arguments over centralization focus principally on whether inclusion of the three
Canon/Océ actions in Schedule B is appropriate. The Canon entities and patent holders contend that
the advanced procedural status of those actions will complicate case management and cause
inefficiencies if they are included. They note that (1) in the Océ infringement action, claim
construction discovery on the two patents at issue closed in early 2012, a final claim construction
order was issued in October 2012, and the action has been stayed pending patent reexamination
proceedings; and (2) in the Canon Inc. contract action, discovery is scheduled to close at the end3
of this month, and fully briefed cross-motions for partial summary judgment on the central issues
are pending. They also note that the Canon U.S.A. infringement action involves sublicense defenses4
that rest on the outcome of the Canon Inc. contract action. The Canon entities and patent holders
point out that this relationship requires coordination of the two New York actions before the same
judge, which already has been effectuated in the Southern District of New York. In contrast, the HP
actions remain at an early stage – five of the seven actions were filed in the past three months.
Further, claim construction discovery is ongoing in all HP actions, and a claim construction hearing
has not yet been held.
We find that that centralization of the Canon actions with the HP actions is unlikely to result
in the just and efficient conduct of the litigation as a whole. See In re: Louisiana-Pacific Corp.
Trimboard Siding Mktg., Sales Practices & Prods. Liab. Litig., 867 F. Supp. 2d 1346, 1346
(J.P.M.L. 2012) (“Where there is such a significant procedural disparity among the subject actions,
the Panel will take a close look at whether movants have met their burden of demonstrating that
centralization will still serve the purposes of Section 1407.”). The potential to reduce duplicative
discovery and motion practice in the Canon actions is limited, if any, considering the advanced status
of discovery and substantive motions in those proceedings. Additionally, two of the Canon actions
involve significant sealed proceedings, which would further complicate the conduct of centralized
pretrial proceedings with the HP actions.
The likelihood that inclusion of the Canon actions would create efficiencies is further
diminished because the Canon and HP actions do not share significant issues of fact. The overlap
See Tesseron, Ltd. v. Océ N.V. , 2012 WL 6951925 (M.D. Fla. Oct. 12, 2012).3
Canon Inc. v. Tesseron, Ltd., C.A. No. 14-05462, Order Modifying Scheduling Order4
(S.D.N.Y. Feb. 11, 2015).
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among the asserted patents is limited. Moreover, the Canon Inc. contract action shares few, if any,5
factual issues with the HP actions. The central issues in that action include whether Tesseron validly
terminated its license agreement with Canon Inc., whether the parties to the agreement complied with
their obligations, and whether Canon U.S.A. has a valid sublicense for certain patents under the
agreement. None of those issues affects resolution of the HP actions. Additionally, the contract
action will not require any patent claim construction or raise patent validity issues that might overlap
with the HP actions.
On the basis of the papers filed and the hearing session held, we find that the actions
involving the Hewlett Packard Company, as listed on Schedule A, 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. These actions share factual questions about the alleged
infringement, validity, and enforcement of one or more Gauthier patents in the field of large-scale
industrial printing machines and, in particular, whether the accused HP printing presses infringe on
certain Gauthier patents concerning variable data printing and inkjet synchronization. Centralization6
will eliminate duplicative discovery, prevent inconsistent pretrial rulings (particularly on claim
construction issues), and conserve the resources of the parties, their counsel and the judiciary.
We conclude that the Northern District of Texas is an appropriate transferee district for this
litigation. Although there is no single location that will be convenient for all parties to all underlying
actions, several accused infringers have operations in or near this district, and Dallas provides an
easily accessible location. The Northern District of Texas also is participating in the national Patent
Pilot Program, and Judge Barbara M.G. Lynn, to whom we assign this action, is one of the judges
participating in that program. She is an experienced jurist who has presided over complex patent
litigation, and we are confident that she will steer this matter 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
The Canon U.S.A. infringement action – the only Canon action in which claim construction5
remains incomplete – involves just three of the nine patents at issue. Only one of the HP actions
involves any of these three patents.
The variable data printing patents at issue in these actions are: the ‘665 patent, the ‘1536
patent, the ‘028 patent, the ‘479 patent, and the ‘233 patent. The inkjet synchronization patents at
issue are: the ‘946 patent and the ‘106 patent. The Panel observes that the inkjet synchronization
patents are involved in only one action, and thus present somewhat less overlap, but agrees with HP
and the patent holders that inclusion of that action is warranted because it involves overlapping HP
accused products and it previously was consolidated for pretrial proceedings by the Eastern District
of Texas court with three other actions on Schedule A.
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of that court, assigned to the Honorable Barbara M.G. Lynn for coordinated or consolidated pretrial
proceedings with the action pending there.
IT IS FURTHER ORDERED that transfer of the actions listed on Schedule B is denied.
PANEL ON MULTIDISTRICT LITIGATION
Sarah S. Vance
Chair
Marjorie O. Rendell Charles R. Breyer
Lewis A. Kaplan Ellen Segal Huvelle
R. David Proctor Catherine D. Perry
Case MDL No. 2614 Document 62 Filed 04/07/15 Page 4 of 6

IN RE: INDUSTRIAL PRINT TECHNOLOGIES, LLC,
PATENT LITIGATION MDL No. 2614
SCHEDULE A
District of Delaware
INDUSTRIAL PRINT TECHNOLOGIES LLC v. VISTAPRINT USA, INC., ET AL.,
C.A. No. 1:15-00049
Northern District of Illinois
INDUSTRIAL PRINT TECHNOLOGIES LLC v. FORT DEARBORN COMPANY,
ET AL., C.A. No. 1:15-00467
Eastern District of Texas
INDUSTRIAL PRINT TECHNOLOGIES LLC v. O’NEIL DATA SYSTEMS, INC.,
ET AL., C.A. No. 2:14-00048
INDUSTRIAL PRINT TECHNOLOGIES LLC v. O’NEIL DATA SYSTEMS, INC.,
ET AL., C.A. No. 2:14-00892
INDUSTRIAL PRINT TECHNOLOGIES LLC v. O’NEIL DATA SYSTEMS, INC.,
ET AL., C.A. No. 2:15-00020
INDUSTRIAL PRINT TECHNOLOGIES LLC v. QUAD/GRAPHICS, INC., ET AL.,
C.A. No. 2:15-00025
Northern District of Texas
INDUSTRIAL PRINT TECHNOLOGIES LLC v. CENVEO, INC., ET AL.,
C.A. No. 3:15-00165
Case MDL No. 2614 Document 62 Filed 04/07/15 Page 5 of 6

IN RE: INDUSTRIAL PRINT TECHNOLOGIES, LLC,
PATENT LITIGATION MDL No. 2614
SCHEDULE B
Middle District of Florida
TESSERON, LTD. v. PUNCH INTERNATIONAL NV, ET AL., C.A. No. 6:10-00909
Southern District of New York
CANON, INC., ET AL. v. TESSERON LTD., ET AL., C.A. No. 1:14-05462
INDUSTRIAL PRINT TECHNOLOGIES LLC v. CANON U.S.A., INC.,
C.A. No. 1:15-00672
Case MDL No. 2614 Document 62 Filed 04/07/15 Page 6 of 6