Case 1:15-cv-01684-JBS-JS Document 38 Filed 06/12/15 Page 1 of 20 PageID: 305
`
`UNITED STATES DISTRICT COURT
`DISTRICT OF NEW JERSEY
`
`BAXTER HEALTHCARE CORPORATION,
`BAXTER INTERNATIONAL INC., and
`BAXTER HEALTHCARE S.A.
`
`Civil Action No. 14-cv-07094-JBS-JS
`
`Plaintiffs,
`
`v .
`
`AGILA SPECIALTIES PRIVATE LIMITED and
`AGILA SPECIALTIES INC.
`
`Defendants.
`
`BAXTER HEALTHCARE CORPORATION,
`BAXTER INTERNATIONAL INC., and
`BAXTER HEALTHCARE S.A.,
`
`Plaintiffs,
`
`v .
`
`SAGENT PHARMACEUTICALS INC.,
`
`Defendant.
`
`
`
`
`
`
`Civil Action No. 15-cv-01684-JBS-JS
`
`
`
`
`
`PLAINTIFFS’ OPPOSITION TO DEFENDANTS’ MOTIONS
`TO CONSOLIDATE AND TO MODIFY DEADLINES
`
`
`Dated: June 12, 2015
`
`DECHERT LLP
`902 Carnegie Center, Suite 500
`Princeton, NJ 08540
`(609) 955-3200
`Robert D. Rhoad
`robert.rhoad@dechert.com
`
`ATTORNEYS FOR PLAINTIFFS BAXTER HEALTHCARE
`CORP., BAXTER INTERNATIONAL, INC., AND BAXTER
`HEALTHCARE S.A.
`
`

`
`Case 1:15-cv-01684-JBS-JS Document 38 Filed 06/12/15 Page 2 of 20 PageID: 306
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`
`
`TABLE OF CONTENTS
`
`
`Page
`
`
`INTRODUCTION .......................................................................................................................... 2
`
`FACTUAL BACKGROUND ......................................................................................................... 3
`
`A.
`
`B.
`
`The Present Cases .............................................................................................. 3
`
`The HQ Case ...................................................................................................... 5
`
`ARGUMENT .................................................................................................................................. 6
`
`I.
`
`II.
`
`GOVERNING LEGAL STANDARDS ...................................................................... 6
`
`THE ABSENCE OF ANY COMMON QUESTIONS OF LAW OR FACT
`PRECLUDE CONSOLIDATION ............................................................................... 8
`
`A. Defendants Have Failed to Demonstrate the Existence of a Common Issue of
`Law or Fact Shared by All of the Cases ............................................................. 8
`
`B.
`
`There Are No Overlapping Claim Construction Issues as Between the Present
`Cases and the HQ Case .................................................................................... 10
`
`III.
`
`CONSOLIDATION WOULD BE INAPPROPRIATE IN THE
`CIRCUMSTANCES PRESENTED HERE .............................................................. 11
`
`A.
`
`The HQ Case Involves Numerous Claims and Disputed Issues Not Relevant to
`the Present Cases ............................................................................................ 122
`
`B. Granting Partial Consolidation Would Result in Greater, Rather than Less,
`Inefficiency ...................................................................................................... 13
`
`C.
`
`The HQ Case Is Far Further Advanced than the Present Cases ....................... 14
`
`IV.
`
`THE COURT SHOULD DENY DEFENDANTS’ REQUEST FOR AN
`EXPEDITED SCHEDULE ....................................................................................... 15
`
`CONCLUSION ............................................................................................................................. 18
`
`-i-
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`
`
`CASES
`
`TABLE OF AUTHORITIES
`
`Arlington Indus., Inc. v. Bridgeport Fittings, Inc.,
`692 F.Supp. 2d 487 (M.D.Pa. 2010) ........................................................................................10
`
`Commil USA, LLC v. Cisco Systems, Inc.,
`575 S.Ct. ___, 2015 WL 2456617 (U.S. May 26, 2015) ...........................................................4
`
`Fenner Investments, LTD., v. 3COM Corp.,
`2008 WL 4876816 (E.D. Tex. Nov. 12, 2008) ....................................................................7, 14
`
`Galicki v. State of New Jersey,
`2014 WL 4105441 (D.N.J. Aug. 18, 2014) .................................................................6, 7, 9, 10
`
`In re Consolidated Parlodel Litigation,
`182 F.R.D. 441 (D.N.J. 1998) .......................................................................................... passim
`
`La Chemise Lacoste v. Alligator Co. Inc.,
`60 F.R.D. 164 (D. Del. 1973) ........................................................................................7, 12, 14
`
`Ledalite Architectural Products v. Focal Point, LLC,
`2008 WL 4964733 (W.D. Wisc. Nov. 14, 2008) .............................................................8, 9, 14
`
`Liberty Lincoln Mercury, Inc. v. Ford Marketing Corp.,
`149 F.R.D. 65 (D.N.J. 1993) ............................................................................................6, 7, 12
`
`LSP Tech. Inc. v. Metal Imp. Co. LLC,
`2010 WL 3447834 (S.D. Ohio Aug. 30, 2010) ................................................................ passim
`
`PB&J Software, LLC, v. Acronis, Inc.,
`2012 WL 4815132 (E.D. Miss Oct. 10, 2012) .............................................................7, 8, 9, 14
`
`STATUTES
`
`21 U.S.C. § 355(b)(2) ......................................................................................................................5
`
`21 U.S.C. § 355(j) ............................................................................................................................5
`
`35 U.S.C. § 271(e)(2) .......................................................................................................................3
`
`OTHER AUTHORITIES
`
`Fed. R. Civ. P. 42(a) ................................................................................................................2, 6, 8
`
`-i-
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`
`
`INTRODUCTION
`
`Defendants have filed a motion to consolidate, but they have not identified a single
`
`disputed issue of law or fact that the cases they seek to consolidate have in common. Not one.
`
`While it is true that Plaintiffs Baxter Healthcare Corporation, Baxter International Inc.,
`
`and Baxter Healthcare S.A. (“Baxter”) assert claims for infringement of U.S. Patent Nos.
`
`6,310,094 (“the ‘094 Patent”) and 6,528,540 (“the ‘540 Patent”) (the “patents-in-suit”) in both
`
`sets of cases, the similarities end there. In their own cases, Defendants do not dispute
`
`infringement, but assert that the patents-in-suit are invalid. In the case with which Defendants
`
`seek to have their cases consolidated (the HQ Case), the reverse is true—the accused infringer
`
`(HQ) is not challenging the validity of the patents-in-suit, but is instead asserting a very narrow
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`non-infringement defense. Thus, the reason Defendants have cited no overlapping disputed issue
`
`as between the two sets of cases they seek to consolidate is that there is no such overlap.
`
`Given the lack of any overlapping issues common to the two sets of cases, consolidation
`
`of those cases would be improper as a matter of law, because under FED. R. CIV. P. 42(a), the
`
`existence of a common question of law or fact is a prerequisite for consolidation.
`
`Moreover, there are vast differences between the cases that makes consolidation
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`inappropriate under the circumstances. In the HQ Case, Baxter asserts a host of trade secret and
`
`related tort claims, as well as claims for correction of inventorship regarding patents unrelated to
`
`those at issue in the present cases, that have no counterpart in the present cases. Moreover, the
`
`HQ Case is procedurally far more advanced than the present cases—in the HQ Case, the fact
`
`discovery cutoff has come and gone, the lone claim construction dispute in that Case has been
`
`fully briefed and argued to the Court, and dispositive motions have been filed and fully briefed.
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`Consolidation would unduly and inappropriately delay the resolution of the HQ Case in order to
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`allow the proceedings in the present cases to catch up.
`
`Without consolidation, there is no reason why the Court should alter the standard
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`schedule for patent cases reflected in the Court’s Local Patent Rules, and therefore, the Court
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`should also deny Defendants’ related request that the Court impose upon Baxter a highly
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`expedited schedule that would greatly constrain the time periods Baxter would have to develop
`
`and pursue its patent claims against Agila and Sagent.
`
`FACTUAL BACKGROUND1
`
`A.
`
`THE PRESENT CASES
`
`Baxter is a global healthcare company that develops, manufactures and sells products for
`
`people suffering from a variety of chronic and acute medical conditions. Among the products
`
`that Baxter sells are its BREVIBLOC® Premixed Injection Products, which contain esmolol
`
`hydrochloride as the active ingredient and are used to treat acute cardiac disorders. Agila and
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`Sagent are generic pharmaceutical companies that have each filed an Abbreviated New Drug
`
`Application (“ANDA”) seeking FDA approval to market and sell copycat versions of Baxter’s
`
`BREVIBLOC® products prior to the expiration of the patents-in-suit.
`
`Pursuant to 35 U.S.C. § 271(e)(2), Baxter filed separate patent infringement lawsuits
`
`against Agila and Sagent, asserting that the generic esmolol hydrochloride products that are the
`
`subject of their respective ANDAs (Defendants’ “Accused Products”) each infringe the patents-
`
`in-suit. On May 13, 2015, with the consent of the parties, the Court consolidated the Sagent and
`
`Agila cases for discovery and pretrial case management purposes only. See C.A. No. 15-cv-
`
`01684, Dkt. No. 25.
`
`
`1 The facts set forth herein are based on the allegations recited in the Complaints filed in the
`present cases and the Declaration of Robert D. Rhoad (“Rhoad Decl.”) being filed herewith.
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`Pursuant to the Local Patent Rules, Defendants were obligated to serve Invalidity
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`Contention and Non-Infringement Contentions identifying the basis for any contention that the
`
`patents-in-suit are invalid (L. Pat. R. 3.6(c)) and identifying, for each asserted claim of the
`
`patents-in-suit, any claim limitations that they contend are not met by their Accused Products
`
`(L. Pat. R. 3.6(e)). Defendants served joint Invalidity and Non-Infringement Contentions on
`
`May 27, 2015. See Rhoad Decl., Ex. 1. Although those Contentions span nearly 300 pages, the
`
`entirety of their purported non-infringement contentions are that the Accused Products “cannot
`
`infringe any of the asserted claims because they are invalid.” Id. at 3. However, as the Supreme
`
`Court recently made clear in Commil USA, LLC v. Cisco Systems, Inc., 575 S.Ct. ___, 2015 WL
`
`2456617, *8-*9 (U.S. May 26, 2015), non-infringement and invalidity are separate and distinct
`
`defenses to a patent infringement claim, and invalidity is not a non-infringement defense. See,
`
`e.g., id. (“invalidity is not a defense to infringement, it is a defense to liability”).
`
`Thus, as their contentions make clear, Defendants do not dispute that their Accused
`
`Products infringe the patents-in-suit, and the only issues of law or fact for the Court to resolve in
`
`the present cases will relate to Defendants’ invalidity defenses—i.e., their assertion that the
`
`patents-in-suit are invalid.
`
`Procedurally, the present cases are at the beginning stages of litigation. A partial
`
`scheduling order was entered on May 13, 2015, and the exchange of initial written discovery has
`
`just begun. To date, the only patent disclosure made pursuant to the Local Patent Rules has been
`
`the Defendants’ service of their Invalidity and Non-Infringement Contentions. Pursuant to the
`
`default schedule incorporated into those Patent Rules, Baxter’s responsive infringement and
`
`validity contentions would be due on July 13, 2015 (45 days after Defendants served their
`
`Contentions). See L. Pat. R. 3.6(g) and (i). The parties have not exchanged any proposed
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`constructions for any disputed claim terms, no claim construction briefing has occurred, and no
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`Markman claim construction hearing has been scheduled. (See Rhoad Decl., ¶ 5-7).
`
`B.
`
`THE HQ CASE
`
`Baxter commenced Baxter Healthcare Corp., et al. v. HQ Specialty Pharma Corp., et al.,
`
`U.S. District Court for the District of New Jersey, Civil Action No. 13-cv-6228 (the “HQ Case”)
`
`nearly 20 months ago, on October 18, 2013. (See C.A. No. 13-cv-06228, Dkt. No. 1). In that
`
`suit, Baxter’s claims are far broader than the claims it asserts here—in addition to asserting
`
`claims against HQ for infringement of the ‘094 and ‘540 patents at issue here, Baxter also asserts
`
`claims against HQ for tortious interference with contract, tortious interference with prospective
`
`business relations, misappropriation of trade secrets, unfair competition, and unjust enrichment,
`
`as well as additional claims against HQ and several other defendants for correction of
`
`inventorship and to quiet title with respect to two patents owned in part by HQ that are not at
`
`issue in the present cases. (See Second Amended Complaint in C.A. No. 13-cv-06228, Dkt.
`
`No. 96).
`
`With respect to Baxter’s patent infringement claims against HQ, HQ is not asserting any
`
`invalidity defenses (see C.A. No. 13-cv-06228, Dkt. No. 160) and has stipulated that its accused
`
`products satisfy all but one of the limitations of all of the asserted claims of the ‘094 and ‘540
`
`patents (the “osmotic-adjusting agent” limitation) (see id., Dkt. No. 38). Thus, the sole issue to
`
`be resolved by the Court in HQ Case relating to the patents-in-suit in the present cases is a very
`
`narrow infringement issue—whether the propylene glycol contained in HQ’s accused products is
`
`an “osmotic-adjusting agent” as recited in each of the claims of the ‘094 and ‘540 patents. (See
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`Rhoad Decl., ¶¶ 8-11).2 That issue is unrelated to any issue of fact or law to be decided in the
`
`present cases.
`
`Baxter’s remaining tort and correction of inventorship claims relate to breaches by
`
`George Owoo (a former Baxter employee) of his contractual, common law, and fiduciary
`
`obligations to Baxter in connection with his involvement as the lead scientist who developed
`
`HQ’s infringing esmolol products. Those claims have no connection to any claims or defenses
`
`asserted in the present cases. (See Rhoad Decl., ¶ 12).
`
`Procedurally, the HQ Case is far further along than the present cases. Claim construction
`
`briefing in the HQ Case was completed last year, in November 2014, and the Court conducted a
`
`Markman hearing six months ago, on January 8, 2015. Dispositive motions have been filed and
`
`briefed. The fact discovery cutoff was May 27, 2015. (See Rhoad Decl., ¶ 13).
`
`I.
`
`GOVERNING LEGAL STANDARDS
`
`ARGUMENT
`
`Defendants seek consolidation pursuant to Fed. R. Civ. P 42(a), which provides that:
`
`(a) CONSOLIDATION. If actions before the court involve a common
`question of law or fact, the court may:
` 1) join for hearing or trial any or all matters at issue in the actions;
` 2) consolidate the actions; or
` 3) issue any other orders to avoid unnecessary cost or delay.
`
`“The purpose of consolidation is ‘to streamline and economize pretrial proceedings so as to
`
`avoid duplication of effort, and to prevent conflicting outcomes in cases involving similar legal
`
`and factual issues.’” Galicki v. State of New Jersey, 2014 WL 4105441, *4 (D.N.J. Aug. 18,
`
`
`2 Because of the differences between HQ’s accused esmolol products and Baxter’s
`BREVIBLOC® Premixed Injection Products, including the inclusion of propylene glycol in
`those products, HQ filed a brand new NDA under 21 U.S.C. § 355(b)(2), commonly referred to
`as a “§ 505(b)(2) application.” (C.A. No. 2:13-cv-06228, Dkt. No. 96, ¶¶ 23-24, 52). Agila and
`Sagent, by contrast, filed ANDAs (abbreviated NDAs) pursuant to 21 U.S.C. §355(j).
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`2014), citing In re TMI Litig., 193 F.3d 613, 724 (3d Cir. 1999) amended, 199 F.3d 158 (3d Cir.
`
`2000). See also Liberty Lincoln Mercury, Inc. v. Ford Marketing Corp., 149 F.R.D. 65, 80-81
`
`(D.N.J. 1993) (“Consolidation is appropriate in order to avoid unnecessary costs and/or delay”).
`
`It is well settled that the existence of a common question of law or fact shared by all of
`
`the cases is a prerequisite for consolidation. In re Consolidated Parlodel Litigation, 182 F.R.D.
`
`441, 443 (D.N.J. 1998) (citations omitted). The party moving for consolidation bears the burden
`
`of proof. Id.
`
`Moreover, while a common question of law or fact is a prerequisite for consolidation, the
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`mere existence of common issues does not require consolidation. See id.; Liberty Lincoln
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`Mercury, 149 F.R.D. at 81. “Once a common question of law or fact has been established, the
`
`decision to consolidate rests in the sound discretion of the district court.” In re Consol. Parlodel
`
`Litig., 182 F.R.D. at 444. In exercising that discretion, courts should weigh interests of judicial
`
`economy against the potential for new delays, expense, confusion or prejudice. Id. Thus, any
`
`potential economies arising from consolidation “must be balanced against the inconvenience,
`
`delay or expense that might result from simultaneous disposition of the separate actions.”
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`Liberty Lincoln Mercury, 149 F.R.D. at 82. See also Galicki, 2014 WL 4105441, *4.
`
`Courts frequently decline to consolidate cases where the overlap in legal or factual issues
`
`is insignificant, the cases involve different legal issues, or the cases are in different stages of
`
`litigation. See, e.g., PB&J Software, LLC, v. Acronis, Inc., 2012 WL 4815132 (E.D. Miss Oct.
`
`10, 2012); LSP Tech. Inc. v. Metal Imp. Co. LLC, 2010 WL 3447834, *2-3 (S.D. Ohio Aug. 30,
`
`2010); see also Illumination Management Solutions, Inc., 2012 WL 4069315 (E.D. Wisc. Sept.
`
`14, 2012) (declining to consolidate two actions where the counts of patent infringement in both
`
`actions involved different questions of law and one of the other actions involved other claims
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`involving corporations law, contracts, and trade secrets); Fenner Investments, LTD., v. 3COM
`
`Corp., 2008 WL 4876816 (E.D. Tex. Nov. 12, 2008) (refusing to consolidate cases where
`
`consolidation would likely delay the earlier action); La Chemise Lacoste, 60 F.R.D. 164, 175-76
`
`(D. Del. 1973) (denying consolidation where one case involved different issues of law and the
`
`disposition of the earlier case would be delayed by the later filed litigation).
`
`II.
`
`THE ABSENCE OF ANY COMMON QUESTIONS OF LAW OR FACT
`PRECLUDE CONSOLIDATION
`
`A.
`
`DEFENDANTS HAVE FAILED TO DEMONSTRATE THE EXISTENCE OF A COMMON
`ISSUE OF LAW OR FACT SHARED BY ALL OF THE CASES
`
`Defendants cannot satisfy the minimum threshold requirement necessary for the Court to
`
`even consider whether consolidation would be appropriate: that is, the existence of a common
`
`question of law or fact shared by all of the cases to be consolidated. Defendants have not
`
`identified a single issue for the Court to resolve that the present cases have in common with the
`
`HQ Case—not one. The reason they have not is because there are no common issues.
`
`In the present cases, there is no dispute that Defendants’ Accused Products infringe the
`
`patents-in-suit, and Defendants’ only defense to Baxter’s patent infringement claims is that those
`
`patents are invalid. In the HQ Case, the reverse is true—HQ is not asserting any invalidity
`
`defenses and its sole defense to Baxter’s patent infringement claims is one of non-infringement.
`
`Thus, while it is true that Baxter is asserting claims for infringement of the same patents in each
`
`of the cases, that is where any similarity ends; there are no common issues of law or fact for the
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`Court to resolve as between the two sets of cases. Accordingly, there is no basis under Rule
`
`42(a) to consolidate them. See In re Consol. Parlodel Litig., 182 F.R.D. at 443 (existence of a
`
`common issue of law or fact is a prerequisite for consolidation under Rule 42(a)).
`
`If the mere assertion of the same patents in two different cases were enough to justify
`
`consolidation, then all patent infringement cases involving overlapping patents would be
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`consolidated. But that is not the law. Review of the case law reveals that the requisite
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`commonality of factual and legal issues required for consolidate does not exist merely because
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`the same patents are asserted in each case:
`
` In PB&J Software, for instance, the court refused to consolidate four patent cases
`
`where, inter alia, the movant had failed to demonstrate that the issues in dispute would be
`
`common across those cases and the cases were at different stages of litigation. 2012 WL
`
`4815132, *2.
`
` Likewise, in Ledalite Architectural Products v. Focal Point, LLC, 2008 WL
`
`4964733, *1 (W.D. Wisc. Nov. 14, 2008), the court declined to consolidate where it was
`
`“not persuaded that the overlap between the two cases is sufficient to warrant
`
`consolidation.” The court specifically noted that “the mere fact that the two cases
`
`involve the same patent and may involve the same prior art and some of the same expert
`
`witnesses does not show why consolidation would help prevent ‘unnecessary duplication
`
`of effort in related cases’ such that consolidation would be proper.” Id.
`
` Similarly, despite acknowledging that there were common issues, including the
`
`fact that the accused infringers “have asserted nearly identical invalidity and
`
`unenforceability defenses and counterclaims,” the court in LSP Tech., 2010 WL 3447834,
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`*2-3, declined to consolidate two cases involving claims for infringement of the same
`
`patent, where “the overlap between the cases is not as significant as LSPT suggests”
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`(because one of the cases included claims for infringement of additional patents not at
`
`issue in the other case) and “the cases are not in similar stages of development.”
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`In these cases, the courts refused to consolidate despite recognizing that it would mean that the
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`court would have to conduct multiple claim construction hearings. See, e.g., PB&J Software, ,
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`2012 WL 4815132; LSP Tech., 2010 WL 3447834, *2-3. The circumstances presented here
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`weigh even more heavily against consolidation than these cases, because as described above,
`
`despite the fact that the same patents are at it issue, there is no overlap in the defenses asserted or
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`disputed patent issues to be resolved by the Court.
`
`In their brief, Defendants merely make generalized, boilerplate assertions that judicial
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`economy would be served by consolidation. But as noted above, they do not identify a single
`
`disputed issue that the two sets of cases have in common, and fail to account for the vast
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`differences in the claims and defenses asserted in those cases. Defendants cite only two cases,
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`each of which is readily distinguishable. In Galicki, the two matters were “based on the same
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`underlying events,” “involve[d] some significant overlap in the causes of action at issue,” and
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`were “still in their relative infancies and have nearly identical procedural postures.” 2014 WL
`
`4105441, *4. In Arlington Indus., Inc. v. Bridgeport Fittings, Inc., 692 F.Supp. 2d 487 (M.D.Pa.
`
`2010), consolidation was not even at issue, and in any event, there was significant overlap in the
`
`disputed patent claims and defenses at issue in the two cases.
`
`B.
`
`THERE ARE NO OVERLAPPING CLAIM CONSTRUCTION ISSUES AS BETWEEN THE
`PRESENT CASES AND THE HQ CASE
`
`The concerns that Defendants express about claim construction are a red herring, because
`
`there are no overlapping claim construction issues as between the present cases and the HQ Case.
`
`In the HQ Case, the sole claim construction issue presented is the proper meaning of the term
`
`“osmotic-adjusting agent.” (See Joint Claim Construction and Prehearing Statement in C.A. No.
`
`13-cv-06228, Dkt. No. 59). Baxter and HQ have submitted extensive briefing on that issue, and
`
`the Court has conducted a Markman hearing to address the issue. Here, by contrast, there is no
`
`dispute that the Defendants’ Accused Products include an “osmotic-adjusting agent,” and
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`Defendants do not assert that the meaning of the term “osmotic-adjusting agent” is a disputed
`
`issue that needs to be decided for purposes of their cases. (See Rhoad Decl., ¶¶ 14-15).
`
`Defendants express concern that they disagree with the construction of certain other
`
`unspecified claim terms to which Baxter and HQ have stipulated in the HQ Case. Presumably,
`
`Defendants are referring to the Stipulated Consent Order Regarding Claim Construction entered
`
`in the HQ Case on July 18, 2014 (C.A. No. 13-cv-06228, Dkt. No. 56), adopting the parties’
`
`stipulated constructions of the claim terms “injectable, aqueous pharmaceutical composition”
`
`and “sterile.” Obviously, Defendants are not bound by that stipulation, so there can be no
`
`concern of any alleged prejudice. Moreover, because HQ has stipulated that its accused products
`
`satisfy those claim limitations, the construction of those claim terms was only relevant in the HQ
`
`Case to issues of invalidity. Given that HQ has now withdrawn its invalidity defenses, however,
`
`the parties’ stipulated construction of those terms will not be relevant to any issue to be resolved
`
`by the Court in the HQ Case. (See Rhoad Decl., ¶ 16-18).
`
`Thus, there is no danger of any inconsistent rulings by the Court in light of any
`
`disagreement that may exist about the proper construction of those claim terms. Accordingly,
`
`Defendants’ concerns about any alleged prejudice arising out of any claim construction issues to
`
`be decided in the HQ Case are entirely illusory and misplaced.
`
`III. CONSOLIDATION WOULD BE INAPPROPRIATE IN THE CIRCUMSTANCES
`PRESENTED HERE
`
`While the existence of common issues of law or fact are a threshold requirement for
`
`consolidation, the mere existence of such commonality does not require consolidation. Rather,
`
`once the existence of a common question has been established by the moving party, the decision
`
`to consolidate rests in the sound discretion of the district court. See In re Consol. Parlodel Litig.,
`
`182 F.R.D. at 443. Even assuming that Defendants had established that there are common
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`questions of law or fact for the Court to resolve as between the present cases and the HQ Case,
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`which they have failed to do as shown above, consolidation would still be inappropriate because
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`consideration of the relevant factors weighs against consolidation for a variety of reasons.
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`A.
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`THE HQ CASE INVOLVES NUMEROUS CLAIMS AND DISPUTED ISSUES NOT
`RELEVANT TO THE PRESENT CASES
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`Even if there was an issue that was common to all of the cases, which there is not, any
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`such minimal commonality would be swamped by the numerous claims and disputed issues that
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`indisputably are unique to the HQ Case and not relevant in any way to the cases against Agila
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`and Sagent—including numerous issues relating to Baxter’s multi-faceted tort claims against HQ
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`and its claims for correction of inventorship of the HQ patents, and the issue of whether HQ’s
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`accused products infringe the patents-in-suit (which is the only disputed issue in the HQ Case
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`relating to Baxter’s patent infringement claims). There is no reason to try those claims and
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`issues together with the Agila and Sagent cases, where the disputed issues to be resolved by the
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`Court relate to Defendants’ assertions that the ‘094 and ‘540 patents are invalid. Those issues
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`are not relevant to any of the claims or defenses to be resolved in the HQ Case, where HQ has
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`withdrawn any such invalidity defense.
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`Indeed, even where a party has established that some commonality exists, federal courts
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`have repeatedly cited the existence of non-overlapping claims and issues unique to one case as a
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`factor weighing against consolidation. See, e.g., Illumination Management, 2012 WL 4069315;
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`LSP Tech., 2010 WL 3447834, *3; La Chemise Lacoste v. Alligator Co. Inc., 60 F.R.D. at 175-
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`76 (finding that where second suit raises new and different issues of law, the two cases are not
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`“sufficiently connected to order consolidation at this late date”). In Liberty Lincoln Mercury, for
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`instance, this Court found that in view of “the disparate factual analyses and sources of proof
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`required by the claims” in the two separate actions, “consolidation is not appropriate.” 149
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`F.R.D. at 81. Likewise, in In re Consol. Parlodel Litig., this Court noted that “[e]ven where
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`cases involve some common issues of fact or law, consolidation may be inappropriate where
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`individual issues predominate.” 182 F.R.D. at 443.3
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`B.
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`GRANTING PARTIAL CONSOLIDATION WOULD RESULT IN GREATER, RATHER
`THAN LESS, INEFFICIENCY
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`Although not addressed in Defendants’ motion, during the initial scheduling conference
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`conducted in these cases, the Court raised the possibility of severing Baxter’s patent
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`infringement claim in the HQ Case from the tort and correction of inventorship claims, and
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`thereafter consolidating only the severed patent infringement claim with the present cases. Such
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`partial consolidation would not make sense under the circumstances, however, because even
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`when looking at just Baxter’s patent infringement claims, the individual issues as between the
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`two sets of cases still predominate over any alleged commonality.
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`Given the very different defenses asserted in the two sets of cases, Baxter’s patent
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`infringement claim in the HQ Case actually has more factual overlap with Baxter’s tort and
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`correction of inventorship claims in that Case than it does with Baxter’s patent infringement
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`claims against Agila and Sagent. In particular, because the only patent infringement issue in the
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`HQ Case is whether HQ’s accused products include an “osmotic-adjusting agent,” the testimony
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`and evidence regarding that issue will focus on HQ’s accused products—i.e., the research and
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`development of those products and the importance and role of the various components used in
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`the products. Those same issues will be at the heart of Baxter’s evidence regarding its other
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`3 Indeed, even with respect to the Agila and Sagent cases, the Court has consolidated them
`with the parties’ consent, but it did so for purposes of discovery and pretrial case management
`only. See C.A. No. 15-cv-01684, Dkt. No. 25. The Court has not yet made any determination as
`to whether those cases will be tried together. Thus, Defendants are asking the Court to go further
`in consolidating the Agila and Sagent cases with the very different HQ Case than the Court has
`yet been willing to go in consolidating the Agila and Sagent cases themselves.
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`claims, each of which directly implicates the research and development work that resulted in
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`HQ’s accused product. (See Rhoad Decl., ¶ 19). In the Agila and Sagent cases, by contrast, the
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`only issue will be the validity of the patents-in-suit. Thus, evidence regarding the development
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`of HQ’s products and their components will be irrelevant, and the evidence will instead focus on
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`issues concerning the disclosures of the prior art, the knowledge of persons of skill in the art, and
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`secondary considerations of non-obviousness.
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`Accordingly, severing Baxter’s claims in the HQ Case into two separate proceedings
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`would require that the same evidence and testimony concerning the development of HQ’s
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`accused products and role of the components therein be presented in each o