J.R. Simplot Co. v. McCain Foods USA, Inc.

          MEMORANDUM DECISION AND ORDER

          David C. Nye U.S. District Court Judge

         INTRODUCTION

         Pending 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 the Motion.

         BACKGROUND

         J.R. 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.

         On 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”).

         On 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.

         On 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.^[1] 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.

         Shortly 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.

         LEGAL STANDARD

         Rule 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).

         ANALYSIS

         Simplot 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.

         Simply 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 ...