Shelton et al v. MRIGlobal et al

Filing 82

ORDER. Order denying 76 Motion to Consolidate Cases by Judge Philip A. Brimmer on 02/26/14.(jhawk, )

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO
Judge Philip A. Brimmer
Civil Action No. 11-cv-02891-PAB-MJW
DAVID M. SHELTON and
DESIGNSENSE, INC.,
Plaintiffs,
v.
MRIGLOBAL, a non-profit corporation, formerly Midwest Research Institute
its National Renewable Energy Laboratory Division, and
ALLIANCE FOR SUSTAINABLE ENERGY, LLC,
Defendants.

ORDER

This matter is before the Court on the Motion to Consolidate Pursuant to Fed. R.
Civ. P. 42(a) and D.C.COLO.LCivR 42.1 [Docket No. 76] filed jointly by defendants
MRIGlobal and Alliance for Sustainable Energy, LLC. Defendants seek an order
consolidating this case (“DesignSense I”) with a related case, DesignSense v.
MRIGlobal, 13-cv-01747-MSK-KLM (“DesignSense II”), pending in this District before
Chief Judge Marcia S. Krieger. Docket No. 76 at 1.
I. BACKGROUND
This dispute arose out of the following events: Plaintiff Design Sense, Inc.
entered into a subcontract with defendant Midwest Research Institute, now MRIGlobal,
relating to the U.S. Department of Energy’s operation and management of the National
Renewable Energy Laboratory in Golden, Colorado. Docket No. 63 at 1. In
DesignSense I, plaintiffs alleged that defendants revealed copyrighted information on

the internet without proper attribution. Docket No. 63 at 2. Plaintiffs brought claims
under the Lanham Act and Copyright Act, thus invoking this Court’s federal question
jurisdiction, along with several state law claims. Docket No. 25. This Court dismissed
both federal causes of action and, declining to exercise supplemental jurisdiction
pursuant to 28 U.S.C. § 1367(c)(3), dismissed all remaining state law claims. Docket
No. 63 at 6-7. The case was closed and Amended Final Judgment was entered on July
9, 2013. Docket No. 71.
Plaintiff filed DesignSense II, a separate action, in Missouri state court, which
defendants subsequently removed to the United States District Court for the Western
District of Missouri, whereupon the action was transferred to the District of Colorado.
DesignSense II, 13-cv-01747-MSK-KLM [Docket No. 2 at 1, 7; Docket No. 2-1 at 3, 11].
The Amended Complaint asserts seven state law claims and one claim under the
Lanham Act. Id. [Docket No. 5 at 4-11]. DesignSense II is currently proceeding in front
of Chief Judge Marcia S. Krieger and United States Magistrate Judge Kristen L. Mix.
The court entered a Scheduling Order and a Motion to Dismiss is currently pending.
See id. [Docket No. 28; Docket No. 18].
Defendants ask this Court to consolidate DesignSense I and DesignSense II,
claiming that both cases involve common questions of law and fact. Docket No. 76.
Plaintiff does not object. Docket No. 79.1

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“[G]iven that this case was closed and dismissed, Plaintiff considered the motion
to consolidate essentially as a motion to have the same judge hear the case newly
transferred from Missouri . . . as heard this case.” Id.
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II. ANALYSIS
Rule 42(a) of the Federal Rules of Civil Procedure provides that “[i]f actions
before the court involve a common question of law or fact, the court may . . .
consolidate the actions.” Fed. R. Civ. P. 42(a)(2). Pursuant to Local Rule 42.1, the
judge assigned to the lowest numbered case decides whether consolidation is
warranted. D.C.COLO.LCivR 42.1. The decision whether to consolidate actions
involving common questions of law or fact is committed to the sound discretion of the
district court. Shump v. Balka, 574 F.2d 1341, 1344 (10th Cir. 1978). The purpose of
Rule 42(a) is “to give the court broad discretion to decide how cases on its docket are to
be tried so that the business of the court may be dispatched with expedition and
economy while providing justice to the parties.” Breaux v. American Family Mut. Ins.
Co., 220 F.R.D. 366, 367 (D. Colo. 2004) (quoting 9 C. W RIGHT & A. MILLER , FEDERAL
PRACTICE & PROCEDURE § 2381 at 427 (2nd ed. 1995)). Therefore, the Court will
consider both judicial economy and fairness to the parties in exercising its discretion
under Rule 42(a). See Harris v. Illinois-California Express, Inc., 687 F.2d 1361, 1368
(10th Cir. 1982).
Courts are reluctant to consolidate a pending case with a case where a final
judgment has been entered, unless the final judgment is first vacated. See Abels v.
Skipworth, 2010 WL 2376230, at *1 (W.D. Wash. June 9, 2010) (Fed. R. Civ. P 42(a)
did not apply to an action that had been dismissed); St. Charles Tower, Inc. v. Cnty. of
Franklin, 2010 WL 743594, at *8 (E.D. Mo. Feb. 25, 2010) (“In this instance, both
actions may involve similar questions of law and fact, but only if the Court’s consent

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judgment is vacated and [the case] reopened.); Howard v. Mo. Bone and Joint Ctr.,
Inc., 2010 WL 597348, at *1 (E.D. Mo. Feb. 17, 2010) (“[T]here is nothing pending
before the Court in [this case]. Thus, there are no considerations of avoiding costs or
conserving resources . . . .”). Here, DesignSense I was closed in its entirety and final
judgment was entered on July 9, 2013. Docket No. 71. Therefore, as the case is
closed and the final judgment has not been vacated, DesignSense I is not properly
considered a pending case for the purposes of Fed. R. Civ. P. 42(a). Thus, the Court
has no mechanism to consolidate the closed DesignSense I with the pending
DesignSense II.
Defendants urge the Court to consolidate the actions because both cases arise
out of the same subcontract and share several common questions of fact. Docket No.
76 at 4. However, in resolving DesignSense I, this Court considered only those alleged
facts necessary to resolving Lanham Act and Copyright Act claims. Docket No. 63 at 26. The Court examined the subcontract only to determine whether it granted
defendants permission to use plaintiffs’ product and, further, whether any facts
supported plaintiffs’ claim that the material defendants posted online was substantially
similar to any copyrighted material. Id. Resolving DesignSense II would require
consideration of all facts underlying plaintiffs’ state law claims – facts this Court did not
need to reach in resolving DesignSense I. Accordingly, the Court finds that the
common questions of fact are limited such that consolidation would not create any
measurable judicial economy.
Defendants further argue that the cases involve common issues of law, pointing

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out that the plaintiffs brought a Lanham Act claim in both cases. Docket No. 76 at 6.
While the cases may share a common question of law concerning a Lanham Act claim,
the plaintiffs in DesignSense II assert seven additional claims arising under state law.
Therefore, the state law claims which make up a majority of DesignSense II were not
issues of law the Court considered in DesignSense I and are not a basis for claiming
common questions of law exist between the two cases. Thus, the Court finds that
consolidation of DesignSense I and DesignSense II would not result in judicial economy
as contemplated by Fed. R. Civ. P. 42(a).
III. CONCLUSION
Accordingly, it is
ORDERED that defendants’ Motion to Consolidate Pursuant to Fed. R. Civ. P.
42(a) and D.C.COLO.LCivR 42.1 [Docket No. 76] is DENIED.

DATED February 26, 2014.
BY THE COURT:

s/Philip A. Brimmer
PHILIP A. BRIMMER
United States District Judge

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