United States District Court, D. Delaware
R. Fallon, United States Magistrate Judge.
Wilmington this 9th day of November, 2018, the court having
considered the Motion to Consolidate Actions filed by Boston
Scientific Scimed, Inc. ("Boston Scientific") (D.I.
471),  IT IS HEREBY ORDERED THAT Boston
Scientific's motion to consolidate is DENIED for the
reasons set forth below:
April 19, 2016, Boston Scientific filed suit against Edwards
(the "First Action"), alleging infringement of U.S.
Patent No. 8, 992, 608 ("the '608 patent").
(D.I. 1) On June 9, 2016, Edwards Lifesciences Corporation
("Edwards Corp."), Edwards Lifesciences PVT, Inc.,
and Edwards Lifesciences LLC ("Edwards LLC")
(collectively, "Edwards") filed an answer and
counterclaims for noninfringement and invalidity of the
'608 patent, and asserting claims for infringement of
U.S. Patent Nos. 9, 168, 133, 9, 339, 383, and 7, 510, 575
(collectively, the "Spenser Patents"). (D.I. 10;
D.I. 301) On August 1, 2016, Edwards Corp. served an
interrogatory response identifying "Edwards Lifesciences
LLC" as a company that manufactured the Sapien 3
product. (D.I. 443 at 5; D.I. 460 at 6)
discovery in the First Action closed on June 30, 2017. (D.I.
153 at ¶ 1) Expert discovery was completed on December
1, 2017. (D.I. 34)
Briefing on the parties' summary judgment motions in the
First Action was completed on April 2, 2018. (D.I. 407) There
are currently seven motions for summary judgment pending
before the court. (D.I. 302; D.I. 306; D.I. 307; D.I. 328;
D.I. 335; D.I. 336; D.I. 337)
May 17, 2018, Boston Scientific moved to amend the complaint
to add Edwards LLC as a defendant in the First Action. (D.I.
442) On September 19, 2018, the court issued a Memorandum
Opinion denying the motion to amend for failure to show good
cause under Rule 16(b)(4). (D.I. 460) Specifically, the court
found that Boston Scientific knew of its potential claim
against Edwards LLC in June 2016, but did not seek to bring a
claim against Edwards LLC until May 2018. (Id. at
5-6) Boston Scientific's objections to the Memorandum
Opinion remain pending. (D.I. 468)
October 3, 2018, Boston Scientific filed a new action against
Edwards LLC (the "Second Action"), alleging
infringement of the '608 patent. (C.A. No. 18-1535, D.I.
1) According to Boston Scientific, the new action was
necessitated by Edwards' failure to disclose the entity
responsible for the manufacture and sale of the accused
Sapien 3 device until the last day of fact discovery. (D.I.
472 at 3)
ten-day jury trial is scheduled to begin in the First Action
on November 26, 2018. (D.I. 455)
to Federal Rule of Civil Procedure 42(a), courts have the
authority to consolidate actions involving a common question
of law or fact. Fed.R.Civ.P. 42(a); see also Oracle Corp.
v. epicRealm Licensing, L.P., C.A. No. 06-414-SLR, 2007
WL 901543, at *5 (D. Del. Mar. 26, 2007). While decisions to
consolidate are discretionary, the court should "balance
considerations of efficiency, expense, and fairness."
Resnik v. Woertz, 774 F.Supp.2d 614, 624 (D. Del.
2011) (citing United States v. Dentsply Int'l,
Inc., 190 F.R.D. 140, 142-43 (D. Del. 1999)). The court
must weigh "the savings of time and effort gained
through consolidation ... against the inconvenience, delay or
expense that might result from simultaneous disposition of
the separate actions." Outten v. Wilmington Tr.
Corp., 281 F.R.D. 193, 196-97 (D. Del. 2012) (citing
Waste Distillation Tech., Inc. v. Pan Am. Res.,
Inc., 775 F.Supp. 759, 761 (D. Del. 1991)).
support of its motion, Boston Scientific contends that
consolidation of the First and Second Actions is warranted
because both actions were filed by Boston Scientific against
an Edwards entity, both complaints assert identical questions
of law and fact regarding infringement of the '608 patent
by Edwards' Sapien 3 product, Edwards' defenses and
third-party claims and counterclaims will be the same in both
actions, and there is no need for additional discovery in the
new case. (D.I. 472 at 6-7) In response, Edwards alleges that
Boston Scientific's motion is an impermissible attempt to
circumvent the court's denial of its motion to amend the
complaint. (D.I. 482 at 4-6) Moreover, Edwards argues that
consolidation will result in delays to the trial schedule of
the First Action because Edwards has yet to file its answer
and counterclaims or conduct discovery on Edwards LLC's
alleged liability and damages in the Second Action.
(Id. at 7-9)
Boston Scientific's motion to consolidate is denied. As a
preliminary matter, courts within the Third Circuit
discourage parties from filing a new action as an end run