J.R. Simplot Company v. McCain Foods USA, Inc.

Filing 40

MEMORANDUM DECISION AND ORDER. IT IS ORDERED: McCain's Motion to Consolidate Cases #29 in case #1:16-cv-00449-DCN is GRANTED. Case No. 1:17-cv-350-BLW, McCain Foods Limited v. J.R. Simplot Company, is hereby CONSOLIDATED with 1:16-cv-00449-DCN and REASSIGNED to Judge David C. Nye. All future filings shall be made only in Case No. 1:16-cv-449-DCN which is now the lead case. Signed by Judge David C. Nye. Associated Cases: 1:16-cv-00449-DCN, 1:17-cv-00350-DCN(caused to be mailed to non Registered Participants at the addresses listed on the Notice of Electronic Filing (NEF) by (st)

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF IDAHO
J.R. SIMPLOT COMPANY,
Case No. 1:16-cv-00449-DCN
Plaintiff,
v.
MEMORANDUM DECISION AND
ORDER

McCAIN FOODS USA, INC.,
Defendant.
_________________________________
McCAIN FOODS LIMITED,
Plaintiff,
v.
J.R. SIMPLOT COMPANY,
Defendant.

INTRODUCTION
Pending before the Court is McCain Foods USA Inc.’s Motion to Consolidate
Cases. Dkt. 29. Having reviewed the record and briefs, the Court finds that the facts and
legal arguments are adequately presented. Accordingly, in the interest of avoiding further
delay, and because the Court finds that the decisional process would not be significantly
aided by oral argument, the Court will decide the motion without oral argument. Dist.
Idaho Loc. Civ. R. 7.1(d)(2)(ii). For the reasons set forth below, the Court GRANTS the
Motion.
MEMORANDUM DECISION AND ORDER - 1

BACKGROUND
J.R. Simplot Company and McCain Foods Limited—the parent company of
defendant McCain Foods USA, Inc.—are two of the world’s largest manufacturers of
frozen french fries and other potato products.
On October 7, 2016, Simplot filed the above captioned case against McCain Foods
USA, Inc. in the District of Idaho for patent infringement, trade dress infringement, and
unfair competition (“Simplot’s case”). Broadly speaking, Simplot asserts that McCain
copied the patented design of its SIDEWINDERS™ frozen french fry (“the ‘036 patent”).
On February 21, 2017, McCain Foods Limited filed suit against Simplot in the
Northern District of Illinois for patent infringement on two related products (“McCain’s
case”). The first patent deals with McCain’s version of a spiral cut french fry, or
TWISTED POTATO™ product (“the ‘916 patent”); the second patent relates to a process
for treating fruits and/or vegetables referred to as “pulsed electric filed process” or PEF
(“the ‘540 patent”). McCain claims that Simplot is infringing on both patents.
On April 14, 2017, shortly after McCain filed its case, Simplot motioned the
Northern District of Illinois to transfer the case to the District of Idaho. It appears that
Simplot made the request, in part, based upon the possibility of consolidating that case
with Simplot’s case.1 On August 9, 2017, the Northern District of Illinois granted

1

The parties spend a great deal of time discussing Simplot’s arguments and representations
before the Northern District of Illinois, and whether those have changed. While interesting and
relevant, those discussions are not binding on this Court. The Court will review the Motion
before it against the appropriate legal standard giving no deference to previous positions either
party asserted before another court.

MEMORANDUM DECISION AND ORDER - 2

Simplot’s motion to transfer. McCain’s case is now pending before Judge B. Lynn
Winmill. No. 1:17-cv-350.
Shortly after the transfer, on September 18, 2017, McCain filed the instant Motion
to consolidate the two cases in the District of Idaho. Simplot filed an opposition.
LEGAL STANDARD
Rule 42(a) authorizes a district court to consolidate cases that share “a common
question of law or fact.” Fed. R. Civ. P. 42(a). The Court has broad discretion to order
consolidation, and in exercising that discretion should “weigh[] the saving of time and
effort consolidation would produce against any inconvenience, delay or expenses that it
would cause.” Huene v. United States, 743 F.2d 703, 704 (9th Cir. 1984).
ANALYSIS
Simplot expresses numerous concerns about consolidating the two cases at hand
such as inconvenience, delay, confusion, and prejudice. McCain believes these concerns
to be unfounded. Many of Simplot’s concerns appear valid; however, the Court and
counsel can handle the issues raised even with consolidation. Furthermore, not
consolidating the cases would likewise raise numerous concerns and administrative
matters which would need attention. Avoiding duplicative work, unnecessary expense to
clients, inconsistent results, and excessive use of judicial resources weigh in favor of
consolidation. Additionally, both cases involve the exact same attorneys. These
competing interests and concerns weigh more heavily in favor of consolidation.
Simply put, these two cases share a common question of fact. Both challenge the
sufficiency of the other’s patent and whether the opposing party’s product infringes on
MEMORANDUM DECISION AND ORDER - 3

their own product design. Simplot does not seem to dispute this fact; it argues that
“McCain should have asserted its utility and design patent infringement claims as
counterclaims in this lawsuit. Instead, McCain waited almost five months after Simplot
filed this lawsuit and chose to sue Simplot in a separate action in an inconvenient forum.”
Dkt. 38, at 11. The forum is now more convenient for Simplot and, although McCain’s
case is somewhat “behind” Simplot’s, “a common question of law or fact” is present in
both cases, at least in regards to the SIDEWINDERS™ and TWISTED POTATO™
products. There is no requirement that every aspect of any two cases considered for
consolidation be identical; rather, the law requires that a common question of law or fact
exist, and judicial economy would be best served by consolidation. Here, the economic
and efficient thing to do is consolidate.
At the heart of both cases are the parties’ claims that each infringes the other’s
design patent rights in their respective spiral-cut potato product designs. It is true that
there are other patent related claims for relief in Simplot’s case, and the additional PEF
patent claim in McCain’s case. However, these case-specific issues will be addressed
even in a consolidated case. Some of these claims may require additional measures
during pre-trial motions,2 but the Court and counsel are capable of separating the issues
and handling all appropriate procedural steps while still maintaining a consolidated case
structure for judicial economy and efficiency.

2

Such as a Markman hearing regarding the PEF patent in McCain’s suit.

MEMORANDUM DECISION AND ORDER - 4

At the very least, consolidation is appropriate to avoid inconsistencies. See W.
Watersheds Project v. Salazar, No. 4:08-CV-435-BLW, 2012 WL 3489307, at *1 (D.
Idaho Aug. 14, 2012). This Court has already ruled on some issues in Simplot’s case. If
the Court does not consolidate these cases, and Judge Winmill were to take a contrary
position (as would be his prerogative) in McCain’s case, it could result in conflicting or
confusing orders.3 In the extreme, were these cases to proceed in parallel and both go to
trial (separately), the juries could reach inconsistent judgments.
Any delay due to consolidation will be minimal. The deadlines in Simplot’s case
are still months away and, while the addition of McCain’s case will add certain claims
that may require new or additional discovery, much will remain the same. No depositions
have been noticed or taken, and by all representations little discovery has changed hands.
Slight extensions in Simplot’s case should be adequate to bring McCain’s case “up to
speed.”
The Court agrees with Simplot that patent cases are complex and combining cases
with similar elements—but also case-specific claims—may be difficult. However, that
difficulty is not unique. Juries frequently hear cases is which various claims require
different evidence, testimony, and even standards of proof. With appropriate preparation,
the Court can adequately instruct a jury to avoid any confusion.

3

The Court is referring to an informal discovery dispute which was resolved by stipulation. One
can easily imagine a different approach from a different chamber which would negate or
seriously infringe on the parameters this Court already approved for the parties with regard to
expert witnesses and disclosures.

MEMORANDUM DECISION AND ORDER - 5

Simplot will not be prejudiced during discovery or at trial as a result of
consolidation. However, after the Markman hearing and the completion of discovery, the
Court would entertain a Motion to Sever for trial if circumstances arise which would
warrant such action; but for now the cases will be consolidated. Here, the benefits
outweigh any disadvantages which may exist. Common questions of law and fact exist
between the two cases and consolidation will serve judicial economy, and avoid
inconsistent results.
ORDER
IT IS ORDERED:
1.

McCain’s Motion to Consolidate Cases (Dkt. 29) is GRANTED.

2.

Case No. 1:17-cv-350-BLW, McCain Foods Limited v. J.R. Simplot
Company, is hereby CONSOLIDATED with the above captioned case and
REASSIGNED to Judge David C. Nye.

3.

All future filings shall be made only in Case No. 1:16-cv-449-DCN which
is now the lead case. The case caption as it appears herein shall be used in
all future pleadings. The original of this Order shall be maintained as part
of the record in this case with a signed copy being placed in the file of Case
No. 1:17-cv-350.

DATED: November 9, 2017
_________________________
David C. Nye
U.S. District Court Judge
MEMORANDUM DECISION AND ORDER - 6