Sage Products, Inc. v. Devon Industries, Inc.

148 F.R.D. 213, 28 U.S.P.Q. 2d (BNA) 1149, 1993 U.S. Dist. LEXIS 4201, 1993 WL 99765
CourtDistrict Court, N.D. Illinois
DecidedMarch 26, 1993
DocketNos. 92 C 2464, 92 C 2465
StatusPublished
Cited by17 cases

This text of 148 F.R.D. 213 (Sage Products, Inc. v. Devon Industries, Inc.) is published on Counsel Stack Legal Research, covering District Court, N.D. Illinois primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Sage Products, Inc. v. Devon Industries, Inc., 148 F.R.D. 213, 28 U.S.P.Q. 2d (BNA) 1149, 1993 U.S. Dist. LEXIS 4201, 1993 WL 99765 (N.D. Ill. 1993).

Opinion

AMENDED ORDER

NORGLE, District Judge.

These two related eases come before the court on a motion to consolidate and two motions to transfer venue. For reasons detailed below, the court grants the motion to consolidate in part and grants both motions to transfer.

FACTS

According to the complaints, plaintiff Sage Products, Inc. (“Sage”) is an Illinois corporation which owns United States Patent numbers 4,375,849, 4,779,728, and Re. 33,413. These devices are containers designed for the removal and disposal of syringe needles. Sage manufactures, markets, and sells these devices throughout the United States. Sage alleges that defendant Devon Industries (“Devon”) has infringed its patents by making, using, selling, and offering for sale devices embodying the inventions described by Sage’s patents. Also, Devon allegedly makes and sells removable inner containers which are specially adapted for use within Sage’s disposal systems. Likewise, Sage alleges against Becton, Dickinson and Company (“Becton”), a New Jersey corporation, that it has infringed Sage’s patents by making, using, selling, and offering for sale disposal containers which incorporate the subject matter of Sage’s patents.

In April 1992, Sage filed case number 92 C 2464 against Devon alleging that Devon’s containers infringe the three Sage patents. On the same date, Sage filed case number 92 C 2465 against Becton alleging that Becton’s containers infringe two of the three Syringe [215]*215Needle Removal and Disposal patents. The first case was assigned to Judge Norgle, the subsequently filed case was assigned to Judge Anderson. Both defendants answered the respective complaints asserting nonin-fringement and invalidity of the Sage patents. In addition, Becton moved to reassign and consolidate its case with the ease pending against Devon before this court, asserting that the claims are based on the same patents and involve common issues of fact and law. Further, both defendants filed motions to transfer to the United States District Court for the Central District of California.

The court found the cases related under Rule 2.31 of the local rules for the United States District Court for the Northern District of Illinois. See General Rule 2.31. At a January 29, 1993 status hearing, the court ordered counsel to submit an agreed order on consolidation because it appeared that there was agreement on this issue. An agreed order was never submitted. On February 9, 1993 the Executive Committee reassigned ease number 92 C 2465 to this court and consolidated case number 92 C 2464 with 92 C 2465. Because the parties now dispute consolidation, and this court did not officially grant the consolidation motion or order the consolidation, the court will address the motion to consolidate in this opinion to clarify the issue. With this background in mind, the court addresses the respective motions.

DISCUSSION

Fed.R.Civ.P. 42(a) allows the court to consolidate actions involving common questions of law or fact and to order joint hearings of any or all matters at issue. The decision is left to the sound discretion of the trial judge and may be appropriate in patent infringement actions involving the same patents and multiple defendants. Magnavox Co. v. APF Electronics, Inc., 496 F.Supp. 29, 32 (N.D.Ill.1980). The parties do not have to consent or agree to the consolidation. See 9 C. Wright, A. Miller & E. Cooper, Federal Practice § 2383 (1986). The court found the cases related because the plaintiff and patents involved in each case are identical. The cases involve the same intellectual property and both defendants have raised identical issues of fact and law. See General Rule 2.31(A)(1) & (2). Additionally, the handling of both of these pending cases by the same judge will result in a substantial saving of judicial time and effort; neither case has progressed to a point where the relatedness determination would delay the proceedings; and the legal and factual questions are complex, numerous, and susceptible of resolution in a joint hearing. See General Rule 2.31(B).

Similarly, in order to avoid unnecessary costs or delay, the court grants the motion to consolidate in part. The cases are consolidated for purposes of resolving pretrial matters because duplication of effort will be avoided as will the delay and expense of proceeding with separate depositions and separate motion schedules. The enhanced efficiency of jointly handling the numerous, complex issues involved in these cases outweighs any possible inconvenience to the plaintiff that may result. See 9 C. Wright, A. Miller & E. Cooper, Federal Practice § 2383 (1986). At this time, however, the court makes no decision as to whether there will be a consolidated trial on the merits. After the parties complete discovery and have proceeded close to trial, then a renewed motion may raise the issue again.

Having resolved the consolidation motion, the court turns to the issue of venue. Transfer is appropriate under 28 U.S.C. § 1404(a) where the moving party demonstrates that

(1) venue is proper in the transferor district,

(2) the transferee district is one where the action might have been brought (both venue and jurisdiction are proper), and (3) the transfer will serve the convenience of parties and witnesses and will serve the interest of justice. See Medi USA, L.P. v. Jobst Inst., Inc., 791 F.Supp. 208, 210 (N.D.Ill.1992); Heller Fin., Inc. v. Riverdale Auto Parts, Inc., 713 F.Supp. 1125, 1127 (N.D.Ill.1989). A change of venue is left to the discretion of the district judge. Heller Fin., Inc. v. Mid-whey Powder Co., 883 F.2d 1286, 1293 (7th Cir.1989).

The parties only dispute whether the transfer will serve the convenience of the parties and the witnesses and the interest of justice. In evaluating the convenience and fairness of transfer under § 1404(a), the [216]*216court must consider both the private interests of the parties and the public interest of the court. Private interests include (1) plaintiffs choice of forum, (2) the situs of material events, (3) the relative ease of access to sources of proof in each forum including the court’s power to compel the appearance of unwilling witnesses at trial and the costs of obtaining the attendance of witnesses, (4) convenience to the parties—specifically, their respective residences and abilities to bear the expense of trial in a particular forum. Medi USA 791 F.Supp. at 210; see generally 15 C. Wright, A. Miller & E. Cooper, Federal Practice §§ 3849-53 (1986). Public interest factors include the court’s familiarity with applicable law and the desirability of resolving controversies in their locale. Medi USA 791 F.Supp. at 210.

If the court were to consider Sage’s case against each defendant individually, the factors listed above would likely require that the case remain in this venue. Sage’s choice of forum for this litigation, although not of primary importance, see Medi USA 791 F.Supp. at 210, does have a significant connection with its claims.

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148 F.R.D. 213, 28 U.S.P.Q. 2d (BNA) 1149, 1993 U.S. Dist. LEXIS 4201, 1993 WL 99765, Counsel Stack Legal Research, https://law.counselstack.com/opinion/sage-products-inc-v-devon-industries-inc-ilnd-1993.