Unified Messaging Sols., LLC v. United Online, Inc., MDL No. 2371, Slip Op. (N.D. Ill. May 3, 2013) (Lefkow, J.).
Judge Lefkow denied defendants’ United Online, Juno Online Services, Netzero and Memory Lane (collectively “UOL Defendants”) motion to deconsolidate their case from this earlier consolidated patent litigation. The Judicial Panel for Multidistrict Litigation transferred the earlier filed cases to the Court for pre-trial proceedings and ordered that any “tag-along actions” be transferred to the Court. The Court then entered an order providing that any future tag-along actions would be consolidated for pre-trial purposes. The Court also entered a scheduling order which required the consolidated defendants to file certain papers jointly, but providing them enlarged limits for those filings.
Being required to file a joint claim construction brief, particularly with the increased page limits, did not violate the UOL Defendants’ due process rights. The defendants were given increased page limits to assure they had sufficient space to make any necessary arguments. Additionally, the UOL Defendants had not even yet been included in the earlier created schedule.
Additionally, the joint briefing and claim construction hearing did not violate the UOL Defendants’ rights to brief unique issues concerning their respective accused technologies. Claim construction focuses upon the intrinsic evidence surrounding the patents, not the accused technologies.
While the JPML did not require pre-trial consolidation, Fed. R. Civ. P. 42 allowed the Court to consolidate the actions based upon their common questions of law and fact. And by returning each case to its home district for trial, many of the UOL Defendants’ concerned are minimized. The fact that the Court ordered consolidation of tag-along actions before the case against the UOL Defendants was filed was irrelevant.
Finally, pre-trial consolidation did not violate the AIA’s anti-joinder provision, 35 U.S.C. § 299, as the JPML had already held.
CoStar Realty Information, Inc. v. CIVIX-DDI, LLC, No. 12 C 4968, Slip Op. (N.D. Ill. Oct. 18, 2012) (Holderman, C. J.).
Chief Judge Holderman denied patent holder CIVIX-DDI’s motion to transfer this patent dispute to the E.D. Virginia.
Convenience of the Parties
Plaintiff CoStar’s choice of forum was given deference - despite not being resident in Illinois -because of defendant CIVIX-DDI’s prior and existing litigation involving the same patents in this district. The likely location of documents - in Washington, DC - did not weigh in favor of transfer because they would likely be transferred electronically. The third party witnesses were in or near the E.D. Virginia, weighing in favor of transfer.
Both jurisdictions were familiar with the law. The E.D. Virginia had a greater interest in the dispute because CoStar was located there. The ability to try related cases together, however, weighed against transfer. Balancing the locations, the ability to consolidate outweighed the other factors.
Fellowes, Inc. v. ACCO Brands Corp., No. 10 C 7587 & 11 C 4229, Slip Op. (N.D. Ill. Nov. 10, 2011) (Leinenweber, J.).
Judge Leinenweber granted the Royal defendants’ motion to transfer the claims against them to the Northern District of Ohio, and consolidated the remaining claims against defendant ACCO, in this patent dispute involving various aspects of paper shredders. There were five pending cases:
- Royal filed two declaratory judgment cases against plaintiff Fellowes in the Northern District of Ohio. Both were the first-filed suits on the respective patents-in-suit.
- Fellowes responded to those suits by filing patent infringement suits against Royal. ACCO was also a party to the suits, as well as another Fellowes brought against ACCO on additional patents. This case is also interesting as one of the last cases where plaintiffs may file against unrelated parties in a single suit.
- Fellowes also filed an additional suit against Royal in this District regarding anti-jitter technology in paper sensors.
The Court transferred all claims against Royal for the following reasons:
- Royal’s first-to-file position was given some weight.
- Royal, as a competitor of ACCO selling unrelated products, was misjoined in the second Fellowes suit. And discovery efficiencies from a combined suit did not outweigh the joinder rule.
- The location of witnesses and documents weighed in favor of transfer.
- While maximum efficiency would result from consolidating all five cases, it would have come at a cost to Royal.
Left with just Fellowes’ claims against ACCO, the Court consolidated the ACCO cases because they involved the same parties and three related patents. Furthermore, neither party opposed consolidation.