United States District Court, D. Idaho
J.R. SIMPLOT COMPANY, Plaintiff,
McCAIN FOODS USA, INC., Defendant. McCAIN FOODS LIMITED, Plaintiff,
J.R. SIMPLOT COMPANY, Defendant.
MEMORANDUM DECISION AND ORDER
C. Nye U.S. District Court Judge
before the Court is McCain Foods USA Inc.'s Motion to
Consolidate Cases. Dkt. 29. Having reviewed the record and
briefs, the Court finds that the facts and legal arguments
are adequately presented. Accordingly, in the interest of
avoiding further delay, and because the Court finds that the
decisional process would not be significantly aided by oral
argument, the Court will decide the motion without oral
argument. Dist. Idaho Loc. Civ. R. 7.1(d)(2)(ii). For the
reasons set forth below, the Court GRANTS
Simplot Company and McCain Foods Limited-the parent company
of defendant McCain Foods USA, Inc.-are two of the
world's largest manufacturers of frozen french fries and
other potato products.
October 7, 2016, Simplot filed the above captioned case
against McCain Foods USA, Inc. in the District of Idaho for
patent infringement, trade dress infringement, and unfair
competition (“Simplot's case”). Broadly
speaking, Simplot asserts that McCain copied the patented
design of its SIDEWINDERS™ frozen french fry
(“the ‘036 patent”).
February 21, 2017, McCain Foods Limited filed suit against
Simplot in the Northern District of Illinois for patent
infringement on two related products (“McCain's
case”). The first patent deals with McCain's
version of a spiral cut french fry, or TWISTED POTATO™
product (“the ‘916 patent”); the second
patent relates to a process for treating fruits and/or
vegetables referred to as “pulsed electric filed
process” or PEF (“the ‘540 patent”).
McCain claims that Simplot is infringing on both patents.
April 14, 2017, shortly after McCain filed its case, Simplot
motioned the Northern District of Illinois to transfer the
case to the District of Idaho. It appears that Simplot made
the request, in part, based upon the possibility of
consolidating that case with Simplot's
case. On August 9, 2017, the Northern District
of Illinois granted Simplot's motion to transfer.
McCain's case is now pending before Judge B. Lynn
Winmill. No. 1:17-cv-350.
after the transfer, on September 18, 2017, McCain filed the
instant Motion to consolidate the two cases in the District
of Idaho. Simplot filed an opposition.
42(a) authorizes a district court to consolidate cases that
share “a common question of law or fact.”
Fed.R.Civ.P. 42(a). The Court has broad discretion to order
consolidation, and in exercising that discretion should
“weigh the saving of time and effort consolidation
would produce against any inconvenience, delay or expenses
that it would cause.” Huene v. United States,
743 F.2d 703, 704 (9th Cir. 1984).
expresses numerous concerns about consolidating the two cases
at hand such as inconvenience, delay, confusion, and
prejudice. McCain believes these concerns to be unfounded.
Many of Simplot's concerns appear valid; however, the
Court and counsel can handle the issues raised even with
consolidation. Furthermore, not consolidating the cases would
likewise raise numerous concerns and administrative matters
which would need attention. Avoiding duplicative work,
unnecessary expense to clients, inconsistent results, and
excessive use of judicial resources weigh in favor of
consolidation. Additionally, both cases involve the exact
same attorneys. These competing interests and concerns weigh
more heavily in favor of consolidation.
put, these two cases share a common question of fact. Both
challenge the sufficiency of the other's patent and
whether the opposing party's product infringes on their
own product design. Simplot does not seem to dispute this
fact; it argues that “McCain should have asserted its
utility and design patent infringement claims as
counterclaims in this lawsuit. Instead, McCain waited almost
five months after Simplot filed this lawsuit and chose to sue
Simplot in a separate action in an inconvenient forum.”
Dkt. 38, at 11. The forum is now more convenient for Simplot
and, although McCain's case is somewhat
“behind” Simplot's, “a common question
of law or fact” is present in both cases, at least in
regards to the SIDEWINDERS™ and TWISTED POTATO™
products. There is no requirement that every aspect of any
two cases ...