Magistrate Judge Burke recently considered a motion to consolidate two pending patent cases in Eastman Chem. Co. v. Alphapet Inc., C.A. No. 09-971-LPS-CJB (Dec. 29, 2011). Finding for the defendant and ordering consolidation, Magistrate Judge Burke noted that “there are numerous common questions of law and fact between the 971 action and the 702 action.” Id. at 6.
For example, the court found that both actions “involve patents that cover similar technology relating to polyesters, and . . . [t]his court has frequently ordered consolidation where the technology at issue in the separate actions appeared to be similarly related.” Id. As part of this finding, the court observed that all five of the patents asserted in the two actions belong to one USPTO class, and that three of them belong to the same subclass. “Moreover, the two matters involve related technologies that were allegedly utilized at a single [defendant] facility . . . . This will likely result in other commonalities of fact and law.” Id. at 7. The court also found that “there are likely to be a number of efficiencies that result from consolidation.” These included “significant overlap of parties between the two actions,” and the efficiency of “coordinat[ing] deposition testimony and document discovery issues.” Id. at 8-9.
The court next concluded that consolidation would not significantly delay resolution of the actions. The two cases had progressed beyond infringement allegations and non-infringement and invalidity counterclaims. But no scheduling order had yet been entered in one of the actions, and no responses to discovery requests had yet been served. Although the plaintiff objected to consolidation based in part on its proposed schedule in one action, the court found that the “proposed schedule for the 702 action is not dramatically different from the schedule currently in place in the 971 action.” Therefore, “[w]hile it may be (though it is not certain) that some aspects of discovery on the patent claims in the 702 action could move more quickly than they might if that case were consolidated with the 971 action, the overlapping nature of discovery applicable to both cases means that efficiency will best be aided by consolidation.” Id. at 14. Given each of these considerations, Magistrate Judge Burke found that “the relationship between the cases and the efficiencies that would be gained by combining these cases into a single action weighs strongly in favor of consolidation.” Id. at 16.
Finally, the court considered the potential for jury confusion if the actions were to be consolidated for trial and pointed out that consolidation under Rule 42(a) “does not foreclose the possibility of separate trials.” Id. Noting that decisions regarding trial would ultimately be left to Judge Stark, Magistrate Judge Burke ordered consolidation of the cases for pretrial purposes only.