Case: 1:15-cv-00799 Document #: 115 Filed: 12/07/15 Page 1 of 6 PageID #:548
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
`
`
`
`
`Civil Action No. 15-cv-00799
`
`Judge Joan H. Lefkow
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`ROSETTA-WIRELESS CORP., an Illinois
`Corporation,
`
`
`
`
`
`Plaintiff
`
`
`
`
`
`v.
`
`
`
`
`APPLE INC., a California Corporation
`
`
`
`
`
`Defendant.
`
`
`
`
`
`
`
`MOTION FOR PRETRIAL CONSOLIDATION PURSUANT TO F.R.C.P. 42(a)
`
`Pursuant to Federal Rule of Civil Procedure 42(a), Plaintiff Rosetta-Wireless Corp.
`
`(“Rosetta”) respectfully moves this Court to consolidate the pretrial proceedings in Case Nos.
`
`1:15-cv-00799; 1:15-cv-10603, 1:15-cv-10605, 1:15-cv-10608 and 1:15-cv-10611. In
`
`particular, Rosetta requests that the Court provide for a common schedule, coordinated
`
`discovery, consolidated depositions, consolidated Markman, Daubert and summary judgment
`
`proceedings, and consolidated pretrial motions and disclosures.
`
`Consolidation is appropriate and largely undisputed. All of the cases in question are
`
`brought by Rosetta against smartphone manufacturers, and all are based on allegations that the
`
`Defendants infringe U.S. patent 7,149,511 through the sale of smartphone products that operate
`
`as wireless personal servers. Defendants have agreed that pretrial consolidation would, in
`
`principle, be appropriate. See Dkt. No. 103. The Court has also commented that
`
`“consolidation in the future may serve the interests of judicial economy and allow the cases to be
`
`effectively resolved.” Dkt. No. 109 at 5.
`
`
`
`1
`
`ROSETTA-2014
`
`0001
`
`

`
`Case: 1:15-cv-00799 Document #: 115 Filed: 12/07/15 Page 2 of 6 PageID #:549
`
`Accordingly, because consolidation would avoid duplication and reduce the burdens on
`
`the Court and the parties, Rosetta respectfully requests that the Court consolidate the pretrial
`
`proceedings.
`
`I.
`
`DISCUSSION
`
`A. Consolidation Is Undisputed and Plainly Warranted.
`
`It is undisputed that these cases should be consolidated for most pretrial proceedings. In
`
`responding to Rosetta’s request that the cases be coordinated following severance, Defendants
`
`stated that “[t]o be clear, Defendants agree that these cases should be structured as efficiently as
`
`possible to avoid any unnecessary costs for the parties and the Court.” Dkt. No. 103 at 1.
`
`Defendants also stated that they “do not, in principle, object to consolidated Markman
`
`proceedings and a common schedule (other than pretrial and trial dates)….” Id. at 2. After
`
`reviewing the parties’ positions, the Court indicated that consolidation may well be warranted.
`
`Dkt No. 109 at 5 (citing Federal Rule of Civil Procedure 42(a)).
`
`Rule 42(a) provides that the court may join one or more matters at issue in separate
`
`litigations if the separate actions “involve a common question of law or fact.” The rule is
`
`designed to permit courts to consolidate proceedings in whole or in part in order to avoid
`
`wasteful overlap and inconsistent rulings. See Unified Messaging Sols., LLC v. United Online,
`
`Inc., No. 13-343, 2013 WL 1874211, at *4 (N.D. Ill. May 3, 2013) (Lefkow, J.). The court has
`
`broad discretion to fashion a litigation structure that improves efficient adjudication of the
`
`matters in question. Id.
`
`Consolidation under Rule 42(a) is appropriate even when joinder is not proper. See id.
`
`at *7 (holding, in MDL case, that 35 U.S.C. § 299’s “prohibition on joinder of unrelated
`
`defendants based on common acts of infringement does not obviate a … court’s discretionary
`
`
`
`2
`
`ROSETTA-2014
`
`0002
`
`

`
`Case: 1:15-cv-00799 Document #: 115 Filed: 12/07/15 Page 3 of 6 PageID #:550
`
`ability to order pretrial consolidation”); Body Sci. LLC v. Boston Sci. Corp., 846 F. Supp. 2d 980,
`
`986 (N.D. Ill. 2012); see also In re EMC Corp., 677 F.3d 1351, 1360 (Fed. Cir. 2012) (“In
`
`exercising its discretion, the district court should keep in mind that even if joinder is not
`
`permitted under Rule 20, the district court has considerable discretion to consolidate cases for
`
`discovery … under Rule 42[.]”). Indeed, “[o]ne of the ways in which district courts have
`
`sought to temper the waste of judicial resources [created by the America Invents Act’s joinder
`
`prohibitions] is by consolidating associated patent actions for pretrial matters[.]” Global Touch
`
`Solutions, LLC v. Toshiba Corp., 2:14-cv-346, 2015 WL 3798085, at *1 (E.D. Va. June 15,
`
`2015) (emphasis in original, citing Fed. R. Civ. Proc. 42).
`
`Consolidation is warranted, as Defendants and the Court have already acknowledged.
`
`First, common questions of law and fact abound. Each of Rosetta’s cases concerns the same
`
`patent and substantially overlapping validity, infringement and damages questions. Second,
`
`Defendants will suffer no tangible prejudice from consolidation. To the contrary, consolidation
`
`will spare the Defendants from expensive, duplicative litigation of common issues and from
`
`taking overlapping discovery. Were the cases adjudicated separately, the Court would have to
`
`hear the same arguments on the same issues litigated over and over again by similarly situated
`
`parties. There is no reason for such waste, particularly consolidation of most pretrial issues is
`
`generally unopposed.
`
`B. Coordinated Discovery and Pretrial Hearings Would Spare Judicial and Party
`Resources.
`
`Although agreeing to coordination and joint scheduling as a general matter, and
`
`consolidated Markman proceedings in particular, Defendants oppose consolidated depositions of
`
`Rosetta witnesses and consolidated pretrial hearing dates. See Dkt No. 103 at 2. There is no
`
`legitimate justification for duplication of efforts on either of these issues.
`
`
`
`3
`
`ROSETTA-2014
`
`0003
`
`

`
`Case: 1:15-cv-00799 Document #: 115 Filed: 12/07/15 Page 4 of 6 PageID #:551
`
`First, Rosetta’s witnesses—likely the inventors and other members of Rosetta’s executive
`
`team—should not be forced to sit for five separate depositions each, in which they would be
`
`asked the same questions over and over. This would not only place severe burdens on the
`
`witnesses, it would also grant Defendants an improper tactical advantage by wearing down or
`
`confusing the witnesses possibly to the point that they inadvertently provide inaccurate
`
`testimony. Moreover, two of the three inventors are no longer directly affiliated with the
`
`company, thereby implicating the strict restrictions on discovery of third-party witnesses. See,
`
`e.g., Charvat v. Travel Services, 12 CV 5746, 2015 WL 76901, at *1 (N.D. Ill. Jan. 5, 2015)
`
`(explaining the court’s “duty to protect nonparties from unnecessary or burdensome discovery”);
`
`Mintel Int’l. Grp., Ltd v. Neerghen, 08 CV 3939, 2009 WL 249227, at *6 (N.D. Ill. Feb. 3,
`
`2009); Jones v. McMahon, 5:98-CV-0374 FJS/GHL, 2007 WL 2027910, at *16, n. 42 (N.D.N.Y.
`
`Jul. 11, 2007) (collecting cases). Such procedure would also improperly multiply Rosetta’s
`
`litigation costs by an order of magnitude, as Rosetta’s counsel would be required to prepare and
`
`defend the witnesses five times—with each subsequent deposition involving attorney and
`
`witness review or re-review of all of the prior ones.
`
`Second, a consolidated pretrial hearing would spare the Court the substantial and
`
`unnecessary burden of hearing repetitious argument on the same pretrial issues—both
`
`substantive and logistical. Because of the overlap in the issues, there is a high likelihood of
`
`common evidentiary disputes among the cases, and also identical issues impacting jury
`
`instructions and the verdict form. There will also likely be common housekeeping matters
`
`which can and should be discussed and ruled upon in a single pretrial hearing.
`
`II.
`
`CONCLUSION
`
`For all the foregoing reasons, Rosetta respectfully requests that the Court order as
`
`
`
`4
`
`ROSETTA-2014
`
`0004
`
`

`
`Case: 1:15-cv-00799 Document #: 115 Filed: 12/07/15 Page 5 of 6 PageID #:552
`
`follows:
`
`(1) That Case Numbers 1:15-cv-00799; 1:15-cv-10603, 1:15-cv-10605, 1:15-cv-10608
`
`and 1:15-cv-10611 be consolidated under Federal Rule of Civil Procedure 42(a) for
`
`all pretrial proceedings, including a common schedule, coordinated discovery,
`
`consolidated depositions, consolidated Markman, Daubert and summary judgment
`
`proceedings, and consolidated pretrial motions and disclosures; and
`
`(2) That the parties be ordered to meet and confer, and to submit within 14 days of the
`
`Court’s Order a joint scheduling proposal and joint proposed order governing
`
`discovery.
`
`
`
`Date: December 7, 2015
`
`
`
`
`KOBRE & KIM LLP
`
`/s/ Daniel Zaheer______________
`Michael Ng (pro hac vice)
`Daniel A. Zaheer (pro hac vice)
`Michael C. Fasano (pro hac vice)
`Kobre & Kim LLP
`150 California, 19th Floor
`San Francisco, California 94111
`michael.ng@kobrekim.com
`daniel.zaheer@kobrekim.com
`michael.fasano@kobrekim.com
`(415) 582-4803
`
`STADHEIM & GREAR, LTD.
`
`Rolf O. Stadheim
`Kyle L. Harvey
`Robert M. Spalding
`Christopher H. St. Peter
`400 North Michigan Avenue, Suite 2200
`Chicago, Illinois 60611
`stadheim@stadheimgrear.com
`harvey@stadheimgrear.com
`spalding@stadheimgrear.com
`5
`
`ROSETTA-2014
`
`0005
`
`

`
`Case: 1:15-cv-00799 Document #: 115 Filed: 12/07/15 Page 6 of 6 PageID #:553
`
`stpeter@stadheimgrear.com
`(312) 755-4400
`
`Attorneys for Plaintiff Rosetta-Wireless Corp.
`
`
`CERTIFICATE OF SERVICE
`
`
`
`
`
`I hereby certify that on December 7, 2015, I electronically filed Rosetta-Wireless Corp.’s
`
`Motion for Pretrial Consolidation Pursuant to F.R.C.P. 42(a) with the Clerk of the Court using
`
`the CM/ECF system, which will send notification of such filing to all counsel of record.
`
`/s/ Daniel Zaheer_______
`Daniel Zaheer (pro hac vice)
`
`
`
`
`
`6
`
`ROSETTA-2014
`
`0006