Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1032460
`
`Filing date:
`
`01/30/2020
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91248654
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Defendant
`Lyman Boat Owners Association
`
`KARL E MAY
`FRANTZ WARD LLP
`200 PUBLIC SQUARE SUITE 3000
`CLEVELAND, OH 44114
`UNITED STATES
`kmay@frantzward.com, awilkins@frantzward.com
`216-515-1077
`
`Motion to Consolidate
`
`Karl E. May
`
`kmay@frantzward.com, awilkins@frantzward.com
`
`/Karl E. May/
`
`01/30/2020
`
`Motion and Memorandum Order.pdf(832635 bytes )
`Exhs 1-5.pdf(1793248 bytes )
`Exhs 6-10.pdf(2267934 bytes )
`Exhs 11-15.pdf(2300424 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
`
`TRADEMARK TRIAL AND APPEAL BOARD
`
`Lyman Boats LLC
`
`Opposer
`
`and
`
`The Lyman Life, LLC
`
`v.
`
`Lyman Boat Owners Association
`
`Applicant
`
`Opposition No. 91248654
`Application Serial No. 87/853,109
`Mark: Lyman
`
`Opposition No. 91248655
`Application Serial No. 87/929,876
`Mark: Lyman
`
`Opposition No. 91248656
`Application Serial No. 87/829,776
`Mark: Lyman Boat Owners Association
`
`Opposition No. 91248658
`Application Serial No. 87/853,109
`Mark: Lyman
`
`Opposition No. 91248659
`Application Serial No. 87/929,876
`Mark: Lyman
`
`MOTION OF LYMAN BOAT OWNERS ASSOCIATION TO CONSOLIDATE
`
`OPPOSITION PROCEEDINGS AND TO STAY DISCOVERY PENDING RULING
`ON THE MOTION
`
`Applicant/Respondent Lyman Boat Owners Association (”Applicant") moves,
`
`pursuant to TBMP § 511 and Rule 42(a) of the Federal Rules of Civil Procedure, to
`
`consolidate with Trademark Opposition N0. 91448654 for discovery, scheduling, and
`
`trial, the following Oppositions:
`
`Trademark Opposition No. 91248655, filed by Lyman Boats LLC (“Lyman
`Boats”);
`
`Trademark Opposition No. 91248656, filed by Lyman Boats;
`
`Trademark Opposition No. 91248658, filed by the Lyman Life, LLC
`
`("Lyman Life”); and
`
`(1)
`
`(2)
`
`(3)
`
`00794435.DOCX
`
`

`

`(4)
`
`Trademark Opposition No. 9248659, filed by Lyman Life.
`
`The grounds for consolidation-was more fully set forth below—are that all five
`
`Oppositions involve multiple common questions of law and fact, identical parties or
`
`parties in privity (Lyman Life having claimed in Opposition Nos. 91248658 and
`
`9248659 that it has an exclusive license agreement with Lyman Boats), and substantial
`
`overlapping of evidence. Applicant filed three counterclaims in Opposition No.
`
`9124856 that seek cancellation of certain of the marks upon which Opposers rely as a
`
`material basis for their opposition in all five proceedings, and if Applicant prevails on
`
`its counterclaims, in whole or in part, a substantial basis for all the Oppositions would
`
`fail. Also, Opposers have linked their witnesses and documentary evidence through
`
`identical Initial Disclosures and through overlapping and nearly identical discovery,
`
`legal counsel is the same for both Opposers, and Applicant is represented by the same
`
`legal counsel in all five Oppositions.
`
`Moreover, consolidation will effect considerable savings in effort, time, and
`
`expense for the parties with respect to discovery and the submission of evidence at trial,
`
`such that consolidation will not prejudice or inconvenience the parties, but will be of
`
`significant benefit to them.
`
`Applicant also moves that its responses to Opposers‘ discovery be stayed pending a
`
`ruling on the Motion to Consolidate. Opposers have served Applicant with five sets of
`
`similar and in many instances identical discovery described below, and the responses are
`
`due before there can be a ruling on the motion to consolidate. A stay in discovery is
`
`therefore appropriate to avoid the extensive duplication in responding to discovery that
`
`would be unnecessary if the motion to consolidate is granted.
`
`

`

`PARTIES TO THE TRADEMARK OPPOSITIONS
`
`Applicant is an Ohio non—profit corporation recognized by the Internal Revenue
`
`Service as a 501c3 private foundation, and is the oldest and original non—profit
`
`association for Lyman boat enthusiasts.
`
`Lyman Boats is an Ohio limited liability company that is engaged in among other
`
`things the restoration of Lyman boats, selling parts for such restoration, offering boat
`
`brokerage services, and promoting Lyman boats.
`
`Lyman Life is an Ohio limited liability company that holds itself out as a "lifestyle
`
`company" that offers a large variety of goods such as clothing and boating accessories
`
`bearing the marks "Lyman Life" and/or "Lyman." It claims to do so pursuant to an
`
`exclusive license agreement with Lyman Boats.
`
`SUMMARY OF TRADEMARK APPLICATIONS, OPPOSTIONS, AND
`COUNTERCLAIMS
`
`Applicant filed the following Trademark Applications:
`
`‘1.
`
`Application No. 87/829,776, on March 12, 20l8, for the mark LYMAN
`
`BOAT OWNERS ASSOCIATION for "Association Services, namely, promoting the
`
`interests of boat enthusiasts; the bringing together, for the benefit of others,of a variety of
`
`goods excluding the transport thereof, enabling customers to conveniently view and
`
`purchase boats; organizing events for commercial business or advertising services for boat
`
`enthusiasts and owners" in Trademark Class 35.
`
`2.
`
`Application No. 87/853,109 on March 28, 2018 for the mark Lyman for the
`
`same services set forth in Application No. 87,829,776, in Trademark Class 35.
`
`3.
`
`Application No. 87/929,876, on May 21, 2018, for the mark LYMAN for a
`
`

`

`"Calendar relating to the marine and boating industries" in Trademark Class 16.
`
`Each was published for opposition in February 2019.
`
`Thereafter, Opposers filed Trademark Oppositions as follows:
`
`1.
`
`Opposer Lyman Boats filed Opposition No. 91248656 to Application No.
`
`87/829,776 (for the mark Lyman Boat Owners Association for association services)
`
`asserting that the Application should be refused and alleging (in summary) that it is the
`
`owner of Trademark Registration Nos. 2,578,365, 2,902,748, and 5,200,311; that Lyman
`
`Boats has priority rights; that the marks are identical; that the goods and services are
`
`related; that its marks became famous before Applicant's fiiing date ”or any other possible
`
`date on which Applicant may rely”; that Applicant's mark is likely to cause dilution by
`
`blurring or tarnishment of the distinctiveness of Lyman Boat's famous marks; and that
`
`Applicant's mark so resembles Lyman Boat's mark that Applicant‘s mark is likely to cause
`
`confusion, mistake and/or to deceive the trade and the public. Applicant has filed an
`
`answer admitting that Lyman Boats is the owner of the registered marks, denying the other
`
`material allegations, and has asserted counterclaims seeking cancellation of the three
`
`Lyman Boats registered marks.
`
`2.
`
`Opposer Lyman Boats filed Opposition No. 91248654, asserting that
`
`Application No. 87/853, 109 (for the Lyman mark for association services) should be
`
`refused and essentially repeating the same allegations in Opposition N0. 91848656 above,
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`but also alleging that Applicant has never used the Lyman mark. Applicant has filed an
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`answer admitting that Lyman Boats is the owner of the registered marks and denying the
`
`other material allegations.
`
`3.
`
`Opposer Lyman Life filed Opposition N0. 91248658, asserting that
`
`Application N0. 87/853,109 (for the Lyman mark for association services) should be refused
`
`

`

`on the same basis as asserted in Lyman Boats Opposition No. 91248654, with the added
`
`allegation that it does so as the exclusive licensee of registered marks of Lyman Boats, and
`
`that it is the owner of a pending application. Applicant has filed an answer admitting that
`
`Lyman Boats is the owner of the registered marks from which Lyman Life claims its
`
`license agreement derives and the pending application, and denying the other material
`
`allegations.
`
`4.
`
`Opposer Lyman Boats filed Opposition No. 91248655, asserting that
`
`Application No. 7/929,876, for the mark LYMAN for a calendar should be refused,
`
`repeating the assertion that Lyman Boats is the owner of Trademark Registration Nos.
`
`2,578,365, 2,902,748, and 5,200,311 as well as claiming rights through pending
`
`applications, and asserting, as in the above Oppositions, that Lyman Boats has priority
`
`rights, that the marks are identical, that the goods and services are related, that its marks
`
`became famous before Applicant's fiiing date "or any other possible date on which
`
`Applicant may reiy", that Applicant's mark is likely to cause dilution by blurring or
`
`tarnishment of the distinctiveness of Lyman Boat's famous marks, and that Applicant’s
`
`mark so resembles Lyman Boat's mark that Applicant's mark is likely to cause confusion,
`
`mistake and/or to deceive the trade and the public. Applicant has filed an answer admitting
`
`that Lyman Boats is the owner of the registered marks and denying the other material
`
`allegations.
`
`5.
`
`Opposer Lyman Life filed Opposition No. 91248659, asserting that
`
`Application No. 7/929,876, for the mark LYMAN for a calendar should be refused, stating,
`
`as in Opposition No. 91248658 that Lyman Life is the exclusive licensee of Registration
`
`No. 2,578,365 and the owner of a pending application, and otherwise reciting the grounds
`
`asserted by Opposer Lyman Boats in Opposition No. 91248655. Applicant has filed an
`
`5
`
`

`

`answer admitting that Lyman Boats is the owner of the registered marks from which Lyman
`
`Life claims its license agreement derives and the pending application, and denying the other
`
`material allegations.
`
`Accordingly, the Oppositions on their face establish that they are based in material
`
`part on the same three trademark registrations owned by Lyman Boats; that Lyman Boats
`
`and Lyman Life are aligned and in privity by an alleged license agreement; that Lyman
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`Boats and Lyman Life have filed oppositions in four of the five Oppositions asserting
`
`virtually the same grounds; that the counterclaims of Applicant in Opposition No. 9184856
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`permeate all five proceedings; and that John Murtaugh, Esq. and Joseph Burke, Esq.
`
`represent Lyman Boats and Lyman Life in four of the Oppositions and both represent Lyman
`
`Boats in Opposition No. 91848656.
`
`APPLICABLE LAW
`
`The TTAB, just as a federal court, has the power and discretion under Fed. R. Civ.
`
`Pro. 42(a) to grant consolidation of cases that invoive common issues of law and fact, and
`
`both have done so in circumstances similar to those described in this Motion. For
`
`example, in Wisconsin Cheese Group, LLC v. Comercializadom de Lacteos y Deruvados,
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`SA. de C. V. 118 USPQ25 1262, 1264 (TTAB 2016), a motion to consolidate opposition
`
`proceedings was granted where the proceedings were based on same trademark
`
`application, the grounds for opposition were similar, and common questions of law and
`
`fact were present. The TTAB considered, and found in such circumstances that savings in
`
`time, effort and expense gained from consolidation outweighed any prejudice or
`
`inconvenience resulting from consolidation. Along the same lines, in Dating DNA LLC v.
`
`Imagini Holdings Ltd, 94 USPQ2d 1889, 1893, a motion to consolidate opposition
`
`proceedings was granted where there were identical parties, similar marks, and related or
`
`6
`
`

`

`identical issues. In Eastman Chemical Company v. Alphabet, Inc, Case No. 09-973 (D.
`
`Delaware Dec. 29, 2011) (copy attached), a federal court ordered consolidation under Fed. R.
`
`Civ. Pro.42(a) in a patent case where the dispute concerned related patents and there were
`
`overlapping parties, witnesses and documentsm—factors all present in the instant matter.
`
`Consolidation of the cases under Fed. R. Civ. Pro. 42(a) does not mean that there
`
`will not be separate determinations of each proceeding. Consolidation is primarily
`
`concerned with efficient case management and does not necessarily merge each
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`constituent case into one. Hall v. Hall, _ U.S. __ (2018), 138 S.Ct. 1118. Where, as
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`here, Opposers are challenging three applications, and Applicant is seeking cancellation
`
`of three registered marks, there must be a ruling on each. Id. (consolidated cases remain
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`independent for purposes of finality and appealability).
`
`CONSOLIDATION IS APPROPRIATE
`
`The Oppositions described above present multiple common questions of law and
`
`fact and commonality of issues. Opposers rely upon the same three trademark registrations
`
`in all of the Opposition proceedings, Applicant has filed counterclaims in Opposition No.
`
`91848656 that impact all five Oppositions, Opposition N08. 9128654 and 9128658 are in
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`essence a joint attack by Lyman Boats and Lyman Life on TM App. Serial No. 87853109,
`
`and Opposition Nos. 91248655 and 9124859 are in essence a joint attack by Lyman Boats
`
`and Lyman Life on TM App. Serial No. 87/929876. Opposers are linked by a license
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`agreement and are represented by the same legal counsel. In these circumstances, the
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`questions of law and fact are more than merely “common”; they are inextricably
`
`intertwined. Consolidation of all of the Oppositions is therefore appropriate under Fed. R.
`
`Civ. Pro. 42(a).
`
`.
`
`If there were any lingering doubt from the above about the propriety of
`
`7
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`

`

`consolidation, discovery recently served upon Applicant by Opposers removes it. On
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`January 2, 2020—the same day as the discovery conference
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`1—counsel for Opposers served
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`Applicant’s counsel with identical sets of Initial Disclosures in alt five Oppositions. They
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`simultaneously served five sets of overlapping and in many respects identical requests for
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`production of documents, interrogatories, and requests for admissionsz. They did so after
`
`specifically rejecting Applicant's Counsel's proposal at the discovery conference for
`
`consolidated discovery.
`
`Opposers' Initial Disclosures are attached hereto as Exhibits 1-5. The witnesses
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`listed by Opposers, the description of the subject matter or information, and listing of
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`documentary evidence are word—for~word identical. Opposer’s Requests for Production
`
`of Documents are attached hereto as Exhibits 6— 10. These contain many requests for the
`
`very same documents as well. This is especially the case in Opposition Nos.
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`91248655 and 91248659, where Lyman Boats and Lyman Life, respectively oppose
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`Application Serial No. 87/929876; Opposers submitted word—for—word identical sets of
`
`Requests for Production (Exhibits 7 and 9) with the sole exception that Opposer
`
`Lyman Boats added a request No. 74 in Opposition No. 912486553. There is also
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`much similarity and overlap amongst the questions in Opposers’ five sets of
`
`interrogatories—attached hereto as Exhibits 11— 15. Although the questions are in
`
`different order making the comparison difficult, the variance between the two is slight,
`
`and appears to involve under five questions.
`
`‘ Counsel treated the January 2 discovery conference as a joint conference for all five Opposition proceedings.
`2 The Requests for Admissions ranged from 114 to 155, thereby greatly exceeding the limit of 75 under TBMP
`407.05(a.). One Request for Production of Documents contained 120 requests, including subparts, and therefore
`exceeded the limit of 75 under TBMP 406.05(a). Applicant has served Opposers with notice of objection to the
`offending requests.
`3 Request No. 74 in Exhibit 7 actually asks for 18 specific documents, thus arguably putting this request over the
`limit of 75 as well.
`
`

`

`Therefore, Opposers’ discovery requests establish commonality of issues and
`
`facts beyond peradventure. Indeed, by submitting such discovery along with identical
`
`sets of Initial Disclosures, Opposers are estopped to deny it.
`
`Moreover, there is no obvious justification for requiring Applicant to respond to
`
`five separate sets of document requests and interrogatories that seek virtually the same
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`information—much of which is relevant to and permeates all five Opposition Proceedings.
`
`Opposers' discovery imposes an undue burden upon Applicant with no corresponding
`
`benefit. By submitting five sets of similar and in some cases identical document requests
`
`and interrogatories, Opposers effectively evade the limit of 75 imposed by TBMP §§
`
`405.03 and 406.054 without receiving any additional information that warrants exceeding
`
`such limits. This is especially true in Opposition Nos. 9128654 and 9128658—the joint
`
`attack by Lyman Boats and Lyman Life on TM App. Serial No. 87853109, and in
`
`Opposition Nos. 91248655 and 9124859—the joint attack by Lyman Boats and Lyman
`
`Life on TM App. Serial No. 87/929876. The parties, in consolidated discovery, can easily
`
`submit discovery for the common issues and distinct discovery on the few issues that are
`
`not common within the numbers limits imposed by TBMP rules.
`
`Opposers' Initial Disclosures and discovery requests also create the strong
`
`inference that there was no reason for Opposers’ counsel to reject the proposal of
`
`Applicant’s counsel at the discovery conference for consolidated discovery other than
`
`that they intended to heap mounds of duplicative discovery upon Applicant’s counsel
`
`later that day.5 Regardless of motive, such duplicative discovery does nothing to
`
`advance the proceedings in an efficient and costusavings manner, and in fact has the
`
`4 Beyond the extent that they have already exceeded the limits as shown in footnote 2.
`5 This refusal hints of abuse of the discovery process, especially in light of Opposers’ disregard of the limit of 75
`for Requests for Admission and one set of Requests for Production of Documents.
`
`9
`
`

`

`opposite effect. Perhaps Opposers should also have been mindful of the old adage that
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`“sauce for the goose is sauce for the gander;” absent consolidation Applicant will have
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`to serve five sets of discovery on Opposers and Opposers will have to submit five sets
`
`of responses. This would accomplish nothing and would simply be a waste of time.
`
`A STAY 0F DISCOVERY IS ALSO WARRANTED
`
`It is also within the power of the TTAB stay discovery pursuant to TBMP § 511
`
`and Fed. R. Civ. Pro. 42(a), which provides that “If actions before the court involve a
`
`common question of law or fact, the court may... (3) issue any other orders to avoid
`
`unnecessary cost or delay.” The unnecessary cost of responding to five sets of similar and
`
`in many instances identical discovery is manifest.
`
`Courts, and therefore the TTAB, have the inherent power to stay discovery through
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`its exercise of control over proceedings before it. Rivers 12. Walt Disney Co., 980 F. Supp.
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`1358 (CD. California 1997) (proceedings including discovery stayed pending ruling on a
`
`motion filed with the Judicial Panel on Multidistrict Litigation (JPML) under court's power
`
`to control disposition of causes on its docket with economy of time and effort for itself and
`
`for counsel.) In Rosemarie B. MIMS v. Davol, Inc, 2018 WL 3025050 (WD. N. Mexico
`
`2018), the court granted the defendant's motion to stay proceedings pending a ruling on
`
`defendant‘s motion to transfer filed with the JPML, accepting the movant‘ s argument that
`
`they would suffer prejudice if require to devote significant resources on discovery (and
`
`discovery disputes) if the case was ultimately transferred to the JMDL. While JMDL
`
`motions are made under statute and not under Fed. R. Civ. Pro. 42(a), such motions involve
`
`consolidation and are highly analogous, such that the issues involved in stays of discovery
`
`under both areindistinguishable.
`
`Given the enormous and unnecessary burden that Opposers have attempted to
`
`10
`
`

`

`impose on Applicant through five sets of manifestly overlapping, duplicative, and in some
`
`cases identical discovery, the issuance of a stay of the time in which Applicant must
`
`respond to Opposers‘ discovery until there is a ruling on the motion to consolidate is not
`
`only appropriate but compelling. Absent a stay, Applicant's responses to all five sets of
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`discovery would be due on Monday, February 3. If the motions to stay of discovery and
`
`to consolidate are granted, this unnecessary burden will be obviated.
`
`Nor would the requested stay of discovery be prejudicial to any party or interfere
`
`with the expeditious disposition of this litigation. Discovery is in its early stages, the stay
`
`is only temporary, and any slight delay while awaiting a ruling will more than
`
`compensated by the time savings gained through Applicant’s not having to respond to five
`
`sets of overlapping discovery while the motion is pending, which, if granted, it will not
`
`have to do at all. Nor will Applicant need to prepare five sets of discovery to serve on
`
`Opposers before Applicant knows whether it will be necessary to do so. Applicant also
`
`notes that the schedule established by the TTAB in Opposition No. 91248656—the
`
`proceeding in which Applicant filed counterclaims—is longer than the schedules in the
`
`other four Opposition Proceedings. The initial disclosures in this proceeding are not due
`
`until March 4 (although Opposers have already submitted their initial disclosure in this
`
`Opposition as well). This schedule could be adopted by the TTAB as the schedule for all
`
`of the combined cases, thereby resulting in no material delay in discovery at all. Or, the
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`TTAB could set a new schedule after ruling on the instant motions.
`
`CONCLUSION
`
`For the reasons set forth above, Applicant requests that the TTAB issue its order
`
`that (1) Trademark Opposition Nos. 91248655, 91248656, 91248658, and 9248659 are
`
`consolidated with Opposition N0. 91248654 for discovery, scheduling, and trial purposes
`
`11
`
`

`

`(proceeding No. 91248654 bearing the lowest case number and hence the parent
`
`proceeding); and (2) discovery in all of said proceedings is stayed pending a ruling on
`
`Applicant's motion to consolidate.
`
`Respectfully submitted
`
`January 30, 2020
`
`Karl E. May (Ohio reg. 0033 94
`Frantz Ward LLP
`
`200 Public Square, Suite 3000
`Cleveland, Ohio 44114
`
`PhOne: (216) 515—1077
`
`Fax: (216) 515-1656
`
`Attorney for Applicant Lyman Boat Owners
`Association
`
`12
`
`

`

`RTIFI AT
`
`F ERVI E
`
`I hereby certify that a true and complete copy of the foregoing Motion of Lyman
`Boat Owners Association to Consolidate Opposition Proceedings and to Stay Discovery
`Pending Ruling on Motion has been served on John P. Murtaugh, Esq. and Joseph T.
`Burke, Esq. by forwarding said copy on January30, 2020 via email and United States
`Mail to:
`
`John P. Murtaugh, Esq.
`Pearne & Gordon LLP
`1801 East 9th Street,
`Suite 1200
`Cleveland, Ohio 44114-3108
`
`i murl‘au gh @ pearne.con1
`
`Joseph T. Burke, Esq.
`Polito Rodstrorn Burke
`21300 Lorain Rd.
`Fairview Park, Ohio 44126
`'ose htburke @aol.com
`
`
`
`.
`. May
`Karl
`Attorney for Lyman Boat Owners Association
`
`13
`
`

`

`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE DISTRICT OF DELAWARE
`
`EASTMAN CHEMICAL COMPANY,
`
`GRUPO PETROTEMEX, S.A. DE C.V., and
`
`DAK AMERICAS LLC,
`
`Plaintiffs,
`
`V.
`
`ALPHAPET INC, INDORAMA HOLDINGS
`
`ROTTERDAM B.V., INDORAMA
`
`POLYMERS ROTTERDAM B.V.,
`INDORAMA POLYMERS WORKINGTON
`
`LTD., and INDORAMA POLYMERS PCL,
`
`Defendants.
`
`GRUPO PETROTEMEX, S.A. DE CV. and
`
`DAK AMERICAS LLC,
`
`Plaintiffs,
`
`V.
`
`ALPHAPET INC,
`
`Defendant.
`
`vvvvvvvvvv
`
`Civ. Action No. 09-971—LPS—CJB
`
`Civ. Action No. 11-702-LPS
`
`MEMORANDUM ORDER
`
`Presently before the court is a motion by AlphaPet, Inc. ("AlphaPet") to consolidate Civ.
`
`' Action No. 09-971-LPS-CJB ("the 971 action") with Civ. Action No. 11—702—LPS ("the 702
`
`action“), pursuant to Fed. R. Civ. P. 42(a)(2).
`
`(971 action, 13.1. 79) Eastman Chemical Company
`
`("Eastman"), Grupo Petrotemex, S.A. de CV. ("Petrotemex"), and DAK Americas, LLC
`
`("DAK") timely opposed. (971 action, DE. 89) Briefing on AlphaPet's motion to consolidate
`
`was completed on December 15, 2011, and the motion is ripe for decision.
`
`

`

`For the reasons stated below, the Court GRANTS AlphaPet's motion to consolidate.
`
`I.
`
`BACKGROUND
`
`A.
`
`The 971 Action1
`
`The 971 action was originally filed on December 18, 2009.
`
`(D.I. 1) On March 31, 2010,
`
`Eastman filed a three-count Amended Complaint. (D.I. 15) The First Count of Eastman's
`
`Amended Complaint asserts that Defendants AlphaPet and Indorama Polymers PCL ("IRP") have
`
`infringed U.S. Patent Nos. 6,906,164 ("the '164 patent); 7,3 58,322 ("the '322 patent"); and
`
`7,459,113 ("the '113 patent") by making, using, selling, or offering for sale certain polyester
`
`monomers, polyester melt phase products, and polyester containers in the United States.
`
`(Id. at
`
`W 50—52)
`
`Each of the patents-in-suit was assigned to Eastman at the time the Amended Complaint
`
`was filed.
`
`(Id. at fl 48) However, on January 31, 2011, Eastman assigned the three patents
`
`asserted in the First Count of the Amended Complaint (along with other patents) to Petrotemex,
`
`who in turn exclusively licensed those patents to DAK. (DJ. 55 at 2)
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`On August 31, 2011, Judge Stark referred the 971 action to me to hear and resolve all
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`pretrial matters, up to and including the resolution of case-dispositive motions, subject to 28
`
`U.S.C. § 636Cb).2 (Dd. 65) On December 9, 2011, after receiving briefing and hearing argument
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`from the parties on a motion by Eastman to substitute DAK and Petrotemex for Eastman as
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`Additional background facts regarding the 971 action are found in the Court's
`1
`Report & Recommendation Regarding Defendants' Motion to Dismiss the Amended Complaint
`(D1. 75) and Memorandum Opinion (DJ. 81), both dated November 4, 2011, and in the Court's
`Memorandum Order (D.I. 92), dated December 9, 2011.
`
`As the instant motion was filed in the 971 action (as well as in the 702 action), I
`2
`have jurisdiction to resolve the motion.
`
`

`

`plaintiffs in the 971 action, I ordered that Petroternex and DAK instead be joined with Eastman
`
`(collectively, "Plaintiffs") in that case. (D.I. 92)
`
`Thereafter, Plaintiffs filed a Supplemental and Second Amended Complaint (D.I. 98),
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`which, inter alia, excludes the prior claims of infringement based upon the '322 patent and the
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`'113 patent (id. at 4 11.3; 111! 52-55), leaving the '164 patent as the only patent asserted in the 971
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`action. The '164 patent is entitled "Polyester Process Using a Pipe Reactor," and names Bruce
`
`Roger DeBruin as the sole inventor.
`
`(Id. at ex. D) The '164 patent includes 243 claims. While
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`the majority of these claims are directed to methods of making a polyester monomer, polymer, or
`
`oligomer from a plurality of reactants, the '164 patent also includes related apparatus claims.
`
`The Second Count of the Second Amended Complaint asserts that defendants Indorama
`
`Holdings Rotterdam ("IHR"), Indorama Polymers Rotterdam ("IPR"), and Indorama Polymers
`
`Workington ("IPW") breached a Technology License Agreement ("the TLA"), which was entered
`
`into by Eastman, IHR, IPR, and [PW on March 31, 2008.
`
`(Id. at Tl} 18, 57—59) The TLA
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`licenses certain intellectual property rights relating to polyethylene terephthalatc ("PET") and
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`purified terephthalic acid, but excludes other rights relating to Eastman's polyester melt phase
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`technology, known as IntegRexTM.
`
`(Id. at llll 18—30) The Third Count of the Second Amended
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`Complaint asserts that all the defendants misappropriated certain Eastman trade secrets relating
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`to IntegRexTM technology, which were not licensed under the TLA.
`
`(Id. at llll 60—69)
`
`On December 8, 20l1, the Court held a Rule 16 teleconference and heard argument from
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`the parties relating to their respective scheduling proposals and discovery protocols. The Court
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`then entered 3 Scheduling Order for the 971 action on December 16, 2011. (D.I. 97) Although
`
`no trial date has been set for the 971 action, the deadline for filing case-dispositive motions is
`
`

`

`May 29, 2013.
`
`(Id. at 8) No defendant has yet answered the Second Amended Complaint,
`
`although briefing on a motion to dismiss IRP for lack of personal jurisdiction has been stayed,
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`pending jurisdictional discovery that is to be completed by January 19, 2012.
`
`(Id. at l)
`
`B.
`
`The 702 Action
`
`On August 10, 201 l, Petrotemex and DAK filed the 702 action, alleging patent
`
`infringement against AlphaPet. (DJ. 1) In the 702 action, Petrotemex and DAK allege that by
`
`making, using, selling, and offering ES(11)A PET Resin for sale, AlphaPet has infiinged US.
`
`Patent Nos. 7,868,125 ("the '125 patent"); 7,863,405 ("the '405 patent"); 7,345,139 ("the '139
`
`patent"); and 7,989,577 ("the '577 patent") (collectively, "the 702 patents—in~suit").
`
`(Id. at llll
`
`13—1 6) Like the '164 patent, the 702 patents-in-suit all relate to polyester polymers, and to
`
`processes of making them. The '125, '405, and '139 patents are exclusively directed to method
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`claims (147 claims in total), while the '577 patent includes 15 claims, all directed to polyester
`
`products. The '139 patent is a continuation of the application that led to the ‘164 patent (now the
`
`sole asserted patent in the 971 action). Petrotemex asserts that it is the owner by assignment of
`
`all right, title, and interest in the 702 patents—in-suit, and that DAK holds an exclusive license
`
`under each of these patents.
`
`(Id. at M 8—11)
`
`In response to the allegations of infringement, AlphaPet asserted counterclaims of non—
`
`infiingement and invalidity, which DAK and Petrotemex timely opposed. (Di. 9, 20) No
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`scheduling order has been entered in the 702 action, and no responses to any requests for
`
`discovery have yet been served.
`
`II.
`
`STANDARD OF REVIEW
`
`"If actions before the court involve a common question of law or fact, the court may. .
`
`.
`
`

`

`consolidate the actions." Fed. R. Civ. P. 42(a). The Court has broad authority to consolidate
`
`actions involving common questions of law or fact if, in its discretion, such consolidation would
`
`"faciiitate the administration ofjustice.” Ellerman Lines, Ltd. v. Atlantic &. GulfStevedores, Inc,
`
`339 F.2d 673, 675 (3d Cir. 1964). Although the existence of common questions of law or fact is
`
`a prerequisite to consolidation, their presence does not require consolidation pursuant to Rule
`
`42(a). Rohm & Haas Co. v. Mobil Oil Corp, 525 F. Supp. 1298, 1309 (D. Del. 1981). Instead,
`
`in considering such a motion, the Court must balance any savings of time and effort gained
`
`through consolidation against any "inconvenience, delay, or expense" that may result. Id.
`
`III.
`
`DISCUSSION
`
`A.
`
`Common Questions of Law or Fact
`
`In line with the requirements of Rule 42(a), AlphaPet argues that there are multiple
`
`common questions of law and fact between the 971 and 702 actions. For example, AlphaPet
`
`states that "[a]li asserted claims and all accused technology relate to [PET] technology," that
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`"[a]ll claims in both [the 971 and 702 actions] are asserted against the same Alpha[P}et PET
`
`manufacturing plant in Decatur, Alabama," and that "there is in substance a complete overlap in
`
`patties between the cases.“ (D.I. 79 at 2)3 AlphaPet further contends that because the '139 patent
`
`is a continuation of the '164 patent, and because all of the patents relate to similar technology,
`
`"[c]ommon questions of law and fact will arise, for example, with respect to the conception and
`
`reduction to practice of the invention, and during claim construction when the Court construes
`
`the meaning of the claim terms." (Id. at 3) In response, Plaintiffs do not directly dispute that
`
`Hereinafter all record citations, unless otherwise noted, are to items on the docket
`3
`in the 971 action.
`
`

`

`there is a common question of law or fact between these two actions, but instead contend that the
`
`"commonalities ofparties, law, and fact" that do exist are "insufficient .
`
`.
`
`. to justify
`
`consolidation." (DJ. 89 at l)
`
`The Court agrees with AlphaPet that there are numerous common questions of law and
`
`fact between the 971 action and the 702 action. For example, both the 971 action and the 702
`
`action involve patents that cover simiiar technology relating to polyesters, and to methods of
`
`making them. One patent (the ‘164 patent) is asserted in the 971 action, and four patents are
`
`asserted in the 702 action. All five of these asserted patents were classified by the US. Patent &
`
`Trademark Office as belonging to Class 528, while the '164 patent, the '139 patent, and the '577
`
`patent each fall into Subclass 308. (971 action, D1. 98 at ex. D; 702 action, DJ. 1 at exs. A——D)
`
`This Court has frequently ordered consolidation where the technology at issue in the separate
`
`actions appeared to be similarly related. See, e.g., Abbott Diabetes Care, Inc. v. Dexcom, Inc.,
`
`CA. No. 06-514 GMS, 2007 WL 2892707, at *4 & n.5 (D. Del. Sept. 30, 2007) (consolidating
`
`two proceedings where multiple patents were asserted, and noting that "[t]he PTO's classification
`
`of most of the patents into the same Class persuades the court" that the asserted patents there
`
`claimed "related technologies"); Rohm cf: Haas Ca, 525 F. Supp. at 1301 & n.2, 1309—10
`
`(consolidating a declaratory judgment action with a patent infringement action in part because
`
`"[a]ll of the six patents underlying the two Suits are directed toward different [di