Free Memorandum in Opposition - District Court of Delaware - Delaware

Case 1:O4—cv—OO939-GI\/IS Document 14-2 Filed O3/15/2005 Page 1 014

Case 1:O4—cv—OO939-Gl\/IS Document 14-2 Filed O3/15/2005 Page 2 of 4
W@tiant
Not Reported id i¤.supp.2d Pass 1
2004 WL 2002208 (D.Dcl.)
(Cite as: 2004 WL 2002208 {I).Dei.))
H .
On December 9, 2.003, the United States Patent and
Motions pieadings and Filings Trademark Office {"l)TO") issued 3. Notice of
Allowance, which allowed the '488 patent to issue as
odiy did Westlaw Cit3.[1OD is eddaaiiy antisera. ma as the issue fee was pwd- OH April 13, 200% tits
PTC) issued the `488 patent. The next day piaintiff
filed its BTC II complaint against defendants alleging
United Sisies Bisdiei Ceuie infringement of the '488 patent. The action was filed
D_ Deiewsm with this court, Civ. No. 04-228, and marked as
svuoetvtra snaps, inc., Plaintiff, telatsd t¤ the BTC I litisativn-
v.
MONSANTO COMPAN'Y’ Deiiiiib Geiseiies Cei~e__ Prior to fiiing this motion to consolidate, plaintiff
pidiieei. Hi_Bied Ii.iiei.iieiiiisiiii_Ii·ie_’ complied with Local Rul 7.1.1 and requested that
Dgw Agygggigngggi LLC, and Myggggg Plant ClCli€Ud3HlZS COi`1S€1'%€ to EDS COl'1S~Oli€la[i<)I1. Defendants
Science, Inc. and Agrigenetics, Inc,, refused and this pending motion resulted,
collectively d.'o.a. Mycogen Seeds, `Defendants. _ _ _ _
Nd C_A_ 02_i33i_SLR_ Plaintiff aiieges that, after the issuance of the Notice
of Allowance, it notified defendants Monsanto and
Aug 27, 2004. DeKalb that an additional patent application was
Paul M. Lukoff, Prickett, Qfones & Elliott, Pcndmg and Pmfided them “'llh il COPY Of Fha
Wiiiiiiiigieiii DE, {ei pieimiirs allowed patent claims and notice. Defendants contest
this assertion and note that the claims of the `488
Richard ir. Horwitz, Parra, Anderson a cdrmdd, iam were mt i¤¤1it¤i¤¢ i¤ discevstr ¤r¤l¤=1¤<>Si¤<>¤S,
LL131 {es Degeiideiiis_ including those taken after the PTO issued the
allowance notice. (D.I. 215 at 5)
MEMORANDUM ORDER
The '488 patent has the following in common with
ROB1NSON’ ]_ the patents at issue in BTC lc
(E) ‘488 was the result of a continuation patent
L ]_NTROi)UCT]0N application of 'l00 patent;
(2) it relates to the expression of Br genes in corn;
*1 od July 25, 2002, pididdrr sydgddtd Seeds, {HC., (3} The si>¤¢iti¤¤ti<§¤S far the ’100 and
filed d edmpididt duegidg defendants infringed three are "virtuatiy idsateai 6>s
df its eeieiiis {··BTC i»·)_ (Dvlil) Disedveiv iii die (4) Both the ‘l00 and '488 inventions were created
BTC I action concluded on Juiy 14, 2004, and the PY tha $&i'¤€mV€¥`¤¥0Y§§ and i _ e
and it scheduled rd}- d jury triai da NOV€FHb€T 29, <5> is t¤¤m¤¤¤r éissisimsd stat
2gg4_ (i)_]_22g) the `100 and ’lS5 patents.
As a resuit of past motions, this court has excluded IH- DISCUSSION
allegations regarding plaintiffs product MON863 and _
refused te eiiew disedveiy eg pcnding eeiees Federal Ruie ot Civil Procedure 42ia] provides this
eepiieeiieiis_ (D_i_2i3_ gi) court with authority to consolidate "actions involving
a common question of law or fact pending before
On April 13, 2004, plaintiff filed another eomplaint tht; Ciluft" Whether or not to consolidate cases is at
against defendants ("BTC ip) {ei iiiiviiiigeeiem df the discretion of the district conrt, but often courts
United Statcs peiem Nd e_·jg_O_4gg §·· digg iieieiipii balance considerations of efficiency, expense and
which is net ai issue iii the BTC [ iiiigeiidd Bcforc fairness. See United States v. Dcrttsglv Ir1r'l, Inc., i90
the court is piaintiffs motion to consolidate BTC H F;.——R·D- O 142**3 D—D€l~199? · Because th€ ASS
Wish the BTC I iiiigeiied (D'i·205) patent involves the expression of Bt genes in corn, an
interpretation of the patent and any infringement
H_ BACKGROUNB necessarily involves sonic of the same questions at
© 2005 Thomsonfwest. No Claim to Orig. U.S. Govt. Works.

Case 1:O4—cv—OO939-Gl\/IS Document 14-2 Filed O3/15/2005 Page 3 of 4
Not Reported in F.Supp.2d Page 2
2004 WL 2002208 (D.Del.)
(Cite as: 2004 WL 2002208 (D.Del.))
issue in the BTC l action. {FN} At issue in this 2004 WL 2002208 (D.Del.)
motion is whether, at this stage in the BTC I
litigation, it is too late to consolidate the cases Motions, Pleadings and Filings (Back to top!
without adding undue delay to an already ripe BTC l
case. . l :02CV0 l 3 31 (Docket)
(J ul. 25, 2002)
QN; Plaintiff cites the following
cornmonalities: (1) parties; (2) products at END OF DOCUMEl\l"l`
issue; (3} underlying technology; (4)
documents/exhibits; (5) legal claim (patent
infringement); (6) defendants will likely
assert the same defenses; (7) the patent at
issue in BTC H shares similarities with the
patents at issue in BTC E; and (8) the same
people will be witnesses in both actions.
(Di. 206 at 4~5)
*2 Plaintiff argues that consolidating the cases will
not prejudice the defendants because the November
29, 2004, trial date can be adjusted, and that
consolidation is more efficient because the parties
will not have to litigate the same issues twice.
Defendants contest consolidation on four grounds;
(l) consolidation will complicate the proceedings; (2)
will lead to delay and increased costs because the .
new patent will require discovery on the same level
as the discovery that took place in BTC I (notably the
discovery went on for more than a year and a hail);
(3) the consolidation prejudices them because, if
plaintiff had disclosed the '488 patent when the notice
of allowance was issued, the defendants could have
included it in their subsequent discovery; and (4) the
efficiency realized through consolidation can be
achieved through other means, namely staying the
BTC H action and application of claim preclusion.
The BTC I case is scheduled to go to trial this
November. At this point in time, and in light of the
courts already tight schedule, the trial date could not
be rescheduled without undue delay. In addition, the
BTC I case alone is highly complex. Adding another
patent to the plaintiffs claims will only increase the
case's complexity and make it that much harder for a
jury to come to a resolution. For all of these reasons,
the court concludes that consolidation of the two
cases would he more burdensome than beneficial.
IV. CONCLUSKBN
"l`herefore, at Wilmington this 27th day of August,
2004;
ET iS ORDERED that plaintiffs motion to
consolidate (DJ.205) is denied.
© 2005 Thomson!West. No Claim to Orig. U.S. Govt. Works.

Case 1:O4—cv—OO939-GI\/IS Document 14-2 Filed O3/15/2005 Page 4 0f 4