Otter Products, LLC v. Treefrog Developments Inc.

Filing 131

ORDER granting 116 Plaintiff Otter Products, LLCs (OtterBoxs)Motion to Consolidate (Motion). It is therefore ORDERED that Civil Action No. 12-cv-03115-WJM-KMT shall be consolidated with Consolidated Civil Action No. 1:11-cv-02180-WJM-KMT for all p urposes, and future filings in this action shall contain the caption as set forth above and shall be docketed under Civil Action No. 1:11-cv-02180-WJM-KMT. It is FURTHER ORDERED that U.S. Magistrate Judge Kathleen M. Tafoya will remain as the sole referral Magistrate Judge in the consolidated action. Magistrate Judge Tafoya will remain designated to conduct NDISPO proceedings pursuant to 28 U.S.C. § 636(b) (1)(A) and (B) and Fed.R.Civ.P. 72(a) and (b), by Judge William J. Martinez on 2/7/2013.(ervsl, ) (Modified on 2/7/2013 edited to reflect NDISPO)(ervsl, ). (Main Document 131 replaced on 2/7/2013) (ervsl, ).

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO
Judge William J. Martínez
Civil Action No. 11-cv-02180-WJM-KMT
(Consolidated with Civil Action No. 1:12- cv-03115-WJM-KMT)
OTTER PRODUCTS, LLC, a Colorado Limited Liability Company,
Plaintiff,
v.
TREEFROG DEVELOPMENTS, INC. d/b/a LIFEPROOF, A Delaware Corporation,
Defendant.
_____________________________________________________________________
ORDER GRANTING MOTION TO CONSOLIDATE 1:11-CV-02180 AND 12-CV-03115
_____________________________________________________________________
This matter is before the Court on Plaintiff Otter Products, LLC’s (“OtterBox’s”)
Motion to Consolidate (“Motion”). (ECF No. 116.) Pursuant to Federal Rule of Civil
Procedure 42(a) and D.C.Colo.LCivR 6.1 and 42.1, Plaintiff moves to consolidate Otter
Products, LLC v. TreeFrog Developments Inc., Civil Action No.
1:11-cv-02180-WJM-KMT (“OtterBox I”) with Otter Products, LLC v. TreeFrog
Developments Inc., Civil Action No. 1:12- cv-03115-WJM-KMT (“OtterBox II”).
Defendant Treefrog Developments Inc. d/b/a LifeProof (“LifeProof”) has filed a
Response to the Motion (ECF No. 123), and OtterBox has filed a Reply (ECF No.
124). The Motion is ripe for adjudication, and having reviewed the relevant materials in
both actions, the Court grants Plaintiff’s Motion to Consolidate.

I. BACKGROUND
Plaintiff asserts three patents against Defendant for patent infringement. These
patents were asserted in OtterBox I with the filing of the Complaint on August 21, 2011.
(ECF No.1.) The patents include: U.S. Patents No. 6,995,976 (“976 patent”); U.S.
Patents No. 7,609,512 (“512 patent”); and U.S. Patents No. 7,158,376 (“376 patent”)
(collectively “the Patents”). (Id. at 3-4.) The Patents purportedly protect Plaintiff’s
inventions, which include water-resistant and impact-resistant cases for electronic
devices, such as the iPhone. (Id. at 3.) Plaintiff alleges that the Patents are infringed
by Defendant’s manufacture, use and sale of its iPhone 4 LifeProof Case, iPad 2
LifeProof Case, Swimming Headphone Adapter, and/or General Use Headphone
Adapter. (Id.)
In late 2012, Defendant began selling two new products known as the iPod Gen
4 case and the “Frë.” (ECF No. 116 at 7.) Both these products protect the iPod4 and
iPhone 5, respectively. (Id.) On November 28, 2012, Plaintiff filed its Complaint in
OtterBox II against Defendant alleging that these new products infringe the same three
patents previously asserted in OtterBox I. (ECF No.1.)
The Motion before the Court, therefore, addresses whether OtterBox I should be
consolidated with OtterBox II.
II. STANDARDS
Rule 42(a) of the Federal Rules of Civil Procedure provides for the consolidation
of actions involving “a common question of law or fact.” The decision whether to
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consolidate actions involving “common questions of law or fact is committed to the
sound discretion of the district court.” C.T. v.. Liberal Sch. Dist., 562 F. Supp. 2d 1324,
1346 (D. Kan. 2008) (citing Shump v. Balka, 574 F.2d 1341, 1344 (10th Cir. 1978);
Touchstone Group, LLC v. Rink, No. 11-cv-2971, 2012 WL 2921223, at *2 (D. Colo.
July 16, 2012) (stating that a district court judge has broad discretion on whether to
consolidate an action.)
“In exercising its discretion, the court should take into consideration whether
judicial efficiency is best served by consolidation.” C.T., 562 F. Supp. 2d at 1346. “The
court generally weighs the saving of time and effort that consolidation would produce
against any inconvenience, delay, or expense that consolidation would cause.” Id. See
also Firstier Bank, Kimball, Neb. v. F.D.I.C. ex rel. Firstier Bank, Louisville, Colo., 2012
WL 1621008, at *2 (D. Colo. May 8, 2012) (citing Emp’rs Mut. Cas. Co. v. W. Skyways,
Inc., 2010 WL 2035577, at *1 (D.Colo. May 21, 2010); Kirzhner v. Silverstein, No.
09-cv-2858, 2011 WL 3568265, at *2 (D. Colo. Aug. 15, 2011).
III. ANALYSIS
A.

Common Issues of Fact and Law
The Court finds common issues of fact and law favor consolidation. First, the

Patents in both cases are identical. The ’976 patent, ’512 patent and the ’376 patent
are all pled in the OtterBox I Complaint. (ECF No. 1 at 3-4.) The same patents are pled
in OtterBox II. (ECF No. 1 at 4-5.) Based on these patents, Plaintiff claims infringement
and relief that is very similar in both cases: damages and injunctive relief. Accordingly,
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given the sameness in the Patents and the relief sought, such commonality sways in
favor of granting Plaintiff’s Motion.1
Second, the alleged infringing products in both cases are similar. Like the
accused products in OtterBox I, the two new products in OtterBox II are protective
cases for Apple products (i.e., the iPhone 5 and the iPod). (ECF No. 116 at 4.) As
asserted by Plaintiff, these products have “flexible membranes covering their touch
screens, which are waterproof and resistant to impacts and crushing forces.” (Id.) To
the extent that differences do exist in the materials in the newly accused devices, the
Court finds that this should not preclude consolidation. The merits of the specific
materials used in the new products (and whether they infringe) are to be addressed at
another time, not in the instant order. See In re Cendent Corp. Litigation, 182 F.R.D.
476, 478 (D.N.J. 1998) (Rule 42 does not demand “that actions be identical before they
may be consolidated”).
Because of the commonality of the fact and law presented by the Patents,
consolidation of the cases is apt, and will be granted in Plaintiff’s favor.
B.

Judicial Economy and Efficiency
Considerations of judicial economy also favor the Motion to Consolidate. The

reasons are three-fold. First, the parties in both cases are the same. This is relevant to

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Defendant’s contention with respect to the differences in damages—i.e., reasonable
royalty and lost profits—has merit, particularly with what was said before Magistrate Judge
Kathleen M. Tafoya on the record. (ECF No. 123 at 5; ECF No. 123-2 at 49.) The Court finds,
though, that the point of difference as to damages is not so significant to make the relief
dissimilar for the purposes of consolidation.

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case management for the parties’ pre-trial discovery, among other things.2 In short, it
makes sense to consolidate so depositions are not duplicated. As for expert witnesses,
judicial efficiency is also best served by consolidation. And to the extent that
differences exist between the products in the two cases, the Court assumes that the
experts will be able to parse the differences in the products and present them before the
Court in due course. Given the parties are the same, and because deposition testimony
can be harmonized by consolidation, this points towards granting Plaintiff’s Motion to
Consolidate.
Second, the judicial officers in both cases are the same. This further strengthens
the argument for consolidation because each judicial officer is already apprised of the
similarities and differences that exist in the cases (at least at this juncture). As such,
this should allay the parties’ concerns regarding consolidation, not heighten them.
Third, the Court notes that it has given weight to Defendant’s compromised
position—i.e. that consolidation may be better suited once OtterBox II reaches the same
“procedural posture” as OtterBox I. (ECF No. 123.) The cases cited by Defendant were
also helpful in providing guidance.3 Schact v. Javits, 53 F.R.D. 321, 325 (S.D.N.Y.
1971) (“[P]roper judicial administration does not recommend consolidation where two
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The Court notes that if the cases are not consolidated, the same “OtterBox witnesses
would have to testify at both trials about issues such as the conception and reduction to practice
of the inventions claimed” in each suit. (ECF No. 116 at 6.) The same also applies to
witnesses going to the alleged ‘pioneering nature’ of the inventions.
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Compromise between the parties is always encouraged. Compromise allows the
parties to focus on those points that count, allowing the merits of the case to be better
assessed. Given the many issues that arise in patent litigation, this would seem most apt.

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actions are at such widely separate stages of preparation.”) However, here, the
procedural posture between the two cases is not so extreme so to foreclose
consolidation of the cases. Indeed, the posture of the cases point towards it.
C.

Consolidation and Prejudice to the Parties
This consideration is more balanced. The crux of Defendant’s position is that

because it has filed a Rule 12(c) Motion in OtterBox II—seeking judgment on the
pleadings—that Motion should be disposed of before any consolidation of the cases.
(ECF No. 18). Specifically, and based on the pleadings in OtterBox II, Defendant
asserts that both the ’976 and ’512 patents are invalid pursuant to 35 U.S.C. §§ 102(f)
and 116 (inventorship). Defendant further asserts that Plaintiff is precluded from
correcting its mistakes by the doctrines of laches, equitable estoppel and judicial
estoppel. (ECF No. 18 at 2.)
But without addressing the merits of the Rule 12(c) Motion, a contest going to
inventorship—pursuant to 35 U.S.C. §§ 102(f) and 116—would as much be relevant to
OtterBox II as it would be OtterBox I. The patents in both cases are identical. By
consolidating the cases, Defendant’s Rule 12(c) Motion could ‘kill two birds with one
stone’—particularly if the Motion is ripe (and raised) in a consolidated case. This
outcome could streamline the consolidated case before it ensues further in these
proceedings.

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D.

Conclusion on Balancing
In sum, the Court concludes that the similarities in the two actions—and the

judicial efficiencies to be gained by their consolidation—outweigh any basis for
permitting the two cases run parallel as separate actions. Plaintiff has not only shown
common questions of fact and law, but there is minimal (if any) prejudice to the parties
should consolidation be granted.
IV. CONCLUSION
It is therefore ORDERED that Civil Action No. 12-cv-03115-WJM-KMT shall be
consolidated with Consolidated Civil Action No. 1:11-cv-02180-WJM-KMT for all
purposes, and future filings in this action shall contain the caption as set forth above
and shall be docketed under Civil Action No. 1:11-cv-02180-WJM-KMT.
It is FURTHER ORDERED that U.S. Magistrate Judge Kathleen M. Tafoya will
remain as the sole referral Magistrate Judge in the consolidated action. Magistrate
Judge Tafoya will remain designated to conduct NDISPO proceedings pursuant to 28
U.S.C. § 636(b)(1)(A) and (B) and Fed.R.Civ.P. 72(a) and (b).
Dated this 7th day of February, 2013.
BY THE COURT:

_________________________
William J. Martínez
United States District Judge

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