Velocity Patent LLC v. Mercedes-Benz USA, LLC, No. 13 C 8413, Slip Op. (N.D. Ill. Apr. 14, 2014) (Darrah, J.).

Judge Darrah granted plaintiff Velocity Patent’s Local Rule 40.4 motion to consolidate patent cases against various corporate entities of Audi, BMW, Chrysler, Jaguar and Mercedes.  Audi objected to consolidation, while the other defendants did

Pactiv Corp. v. Multisorb Techs., Inc., No. 10 C 461, Slip Op. (N.D. Ill. Feb. 15, 2011) (Leinenweber, Sen. J.).
Judge Leinenweber granted defendant Multisorb Technologies’ Fed. R. Civ. P. 42 motion to consolidate a later-filed and related patent case before Judge Dow with the instant case. While the two cases asserted different patents, both cases accused Multisorb’s FreshPax CR device for creating low-oxygen packaging. And several of the patents claimed the same priority. Additionally, the two complaints used virtually identical language. And the fact that plaintiff Pactiv’s patent claims in the first suit were stayed pending reexam did not matter. Regardless of the timing of decisions, having two separate cases would still subject the parties to inconsistent rulings.
And transfer of the later-filed case was warranted to Local Rule 40.4. Both cases involved the same accused product. While the stay of Pactiv’s patent claims in the first suit complicated matters, it did not mitigate the value of consolidating and reassigning the cases before a single judge.

Continue Reading Stayed Patent Claims in One Case Do Not Remove Value of Consolidating Similar Cases

Trading Technologies, Inc. v. BGC Partners, Inc., No. 10 C 715, Slip Op. (N.D. Ill. Feb.3, 2011) (Kendall, J.).*
Judge Kendall consolidated plaintiff Trading Technologies’ (“TT”) patent infringement cases that were filed in 2010 – Judge Coleman previously denied TT’s motions to consolidate the cases filed in 2005 with those filed in 2010. The Court held that the 2010 cases were sufficiently related pursuant to Local Rule 40.1. While the products were not identical and the asserted patents were not identical for each defendant, the accused products were similar and were all accused of infringing one or more of three of TT’s patent families. Additionally, consolidation would conserve substantial time and effort without causing delay.
The Court also ordered the parties to file a summary of all pending motions and discovery status.
* Click here for much more on this case in the Blog’s archives.

Continue Reading Trading Technologies: Court Consolidates 2010 Cases

Rosenthal Collins Group, LLC v. Trading Technologies Int’l, Inc., No. 05 C 4088, Slip Op. (N.D. Ill. Nov. 23, 2010) (Coleman, J.).
Judge Coleman denied plaintiff Trading Technologies’ (“TT”) Local Rule 40.4 motion to consolidate TT’s sixteen pending patent cases,* involving nine patents. Initially, the Court noted that TT did not seek consolidation of all sixteen cases in a single case, but consolidation of the four remaining cases that TT filed in 2005, and separately the twelve cases TT filed in 2010. LR 40.4 requires that a motion to consolidate be filed in the lowest number case. So, while the instant case was the lowest number of the 2005 cases, it was not the lowest number 2010 case. As to the 2010 cases, therefore, the Court did not address consolidation. As to the 2005 cases, TT failed to show that the cases were sufficiently related — while they involved common patents, the accused products operated in “very different manner[s].” Furthermore, while Judge Moran previously coordinated discovery of all of the 2005 cases before the cases were reassigned, TT did not demonstrate that consolidating the 2005 cases would conserve resources.
* Click here for much more on these cases in the Blog’s archives.

Continue Reading Trading Technologies: Court Denies Motion to Consolidate Sixteen Pending Cases

Billingnetwork Patent, Inc. v. Avisena, Inc., No. 09 C 8002, Slip Op. (N.D. Ill. Jan. 4, 2010) (Shadur, Sen. J.).
Judge Shadur sua sponte ordered plaintiff to dismiss and refile against four of the five unrelated defendants in this patent infringement suit. The Court also instructed that the cases should not be refiled as previously dismissed cases such that they would be reassigned to the Court. And the plaintiff should not move for reassignment as a related case pursuant to Local Rule 40.4. The Court, however, noted that it would be open to reciprocal orders allowing concurrent discovery in each of the five cases.

Continue Reading Court Orders Plaintiff to File Separate Patent Suits Against Each Defendant

Bajer Design & Marketing Inc. v. Ware Mfg. Inc., No. 09 C 1425, Min. Order (N.D. Ill. Jun 11, 2009) (Kendall, J.).
Judge Kendall denied plaintiff Bajer’s motion to reassign its second filed patent infringement suit pending before Judge Zagel asserting the patent in suit to Judge Kendall pursuant to Fed. R. Civ. P. 42 and Local Rule 40.4. The cases met two of the four Rule 40.4(b) requirements for reassignment because both cases were pending in the Northern District and because both cases were at similar stages with defendants having just answered, such that reassignment would not slow progress of the first case. The Court also noted that a single Markman proceeding and set of claim constructions was a benefit of reassignment. But the potential for a uniform claim construction was outweighed by the fact that defendants’ accused products and, therefore, noninfringement positions were significantly different. Based upon the differing noninfringement positions and other possible differences in the parties defenses, the Court held that reassignment would not achieve the required substantial savings of judicial time and effort.

Continue Reading Same Patent Not Enough for Reassignment of Plaintiff’s Suits to One Judge

Global Patent Holdings, LLC v. Green Bay Packers, Inc., No. 00 C 4623, Slip Op. (N.D. Ill. Apr. 23, 2008) (Kocoras, J.).
Judge Kocoras reassigned a related case consolidating it with this case and stayed the patent infringement cases pending a second reexamination proceeding. New defendant CDW argued that reassignment of the second case pursuant to Local Rule 40.4 was not appropriate because the first case, which was dismissed without prejudice in light of the first reexam, was filed by TechSearch LLC, instead of the current plaintiff Global Patent Holdings (“GPH”). But original plaintiff TechSearch reopened the case before moving to substitute GPH, the current assignee of the patent in suit and TechSearch’s parent, as plaintiff. Because TechSearch reopened the case, the first case retained its first-filed status. The fact that TechSearch and GPH were no longer related entities when the case was reopened was not relevant.
The Court also held that the two cases were related because both accused defendants’ websites of infringing the patent because they downloaded or induced others to download JPEG and other files.
Finally, reassignment benefited the judicial economy. Neither case had begun significant discovery, so neither would be delayed. Additionally, consolidation would allow one judge to hear the summary judgment motions, which were expected to be numerous, that would apply equally to all parties. The Court, therefore, reassigned the related case to itself.
The Court also stayed the cases pending the reexam. The first reexam resulted in cancellation of each of the original sixteen claims and the issuance of a single, new claim. GPH argued that a second reexam was unlikely to yield new rejections because the patent had been vetted twice. But the Court noted that the original ex parte reexam acted as a first examination of the single, new claim that issued from the reexam. Additionally, the original ex parte reexam did not allow for third party participation. The current inter partes reexam does, generating a more rigorous review of the claim. Finally, the case was delayed four years for the first reexam. Significant judicial resources would have been wasted had the case proceeded on the original sixteen claims, which the PTO ultimately rejected. The Court did not want to risk wasting judicial resources during the second reexam. And with only a single claim, the Court did not expect the second reexam to take four years. The case, therefore, was stayed pending the reexam.

Continue Reading Patent Case Stayed for Second Reexam

Dicam, Inc. v. United States Cellular Corp., No. 07 C 5472, Slip. Op. (N.D. Ill. Sep. 28, 2007) (Shadur, J.).*
Judge Shadur sua sponte ordered plaintiff Dicam to dismiss all parties but defendant United States Cellular (“U.S. Cellular”) and one of its five co-defendants. Dicam’s Complaint alleged patent infringement of telephones sold by U.S. Cellular and manufactured by the other five defendants. The Court could find “no legitimate reason” for brining what it believed were five separate suits as one. The Court explained that if Dicam had filed the suits separately, the Court would not have consolidated them pursuant to Local Rule 40.4, although they might have qualified for coordinated discovery. The Court, therefore, ordered Dicam to dismiss four of the five suppliers, without prejudice to refile separate cases against those suppliers. Dicam has since dismissed all but one of the four suppliers and refiled separate cases against each of the four suppliers with U.S. Cellular named as a co-defendant in each case.
* Click here for a copy of the opinion.

Continue Reading Judge Orders Patent Plaintiff to Sue Suppliers Separately