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Pactiv Corp v. Multisorb Technologies

February 15, 2011


The opinion of the court was delivered by: Hon. Harry D. Leinenweber


Defendant Multisorb Technologies, Inc. (hereinafter, "Multisorb") has filed a Motion to Consolidate the instant case with Case No. 10 C 7609, currently pending before U.S. District Judge Robert M. Dow, Jr., and to reassign that case to this Court. For the following reasons, the Motion is granted.


Plaintiff Pactiv Corp. (hereinafter, "Pactiv") filed the instant suit (hereinafter, "Case 1") against Multisorb on January 22, 2010. The suit accuses Multisorb of infringing its patent on a packaging system that extends the shelf life of meat by reducing its exposure to oxygen. Subsequently, on November 18, 2010, this Court granted Multisorb's Motion to Stay all claims relating the Pactiv patents-in-suit pending reexamination of these patents by the U.S. Patent and Trademark Office (the "PTO"). A breach of contract claim by Pactiv and Counterclaims by Multisorb alleging breach of contract and infringement of its patents remain pending before the Court.

On November 29, 2010, Pactiv filed Case No. 10 C 7609 (hereinafter, "Case 2"), alleging that Multisorb's product infringes two different Pactiv patents not included in the instant lawsuit. Multisorb seeks to consolidate the cases pursuant to FED. R. CIV. P.42 and to reassign the more recently filed case to this Court pursuant to Local Rule 40.4.


A. Motion to Consolidate

Under FED. R.CIV. P. 42(a), actions may be consolidated if they involve common questions of law and fact. Whether to consolidate cases is a decision within the sound discretion of the trial court. Magnavox Co. v. APF Elec., Inc., 496 F.Supp. 29, 32 (N.D. Ill. 1980). Consolidation is meant to promote judicial efficiency, but should not be allowed if prejudice to any of the parties outweighs that consideration. McKnight v. Illinois Cent. R. Co., No. 09-201, 2009 WL 1657581 at *1 (S.D. Ill. 2009). Additionally, consolidation may be ordered where there is a risk of inconsistent rulings. Tipsword v. IFDA Services, Inc., Nos. 09-390, 09-1008, 2010 WL 1521612, at *1 (S.D. Ill., April 10, 2010).

Pactiv's patented system places containers of meat in a bag, adds a scavenger packet to absorb any oxygen that remains in the bag or leaks in over time, flushes the oxygen out of this bag with other gases, and then seals the bag. The allegedly infringing product at issue in both suits is the Maplox Program, and in particular the FreshPax CR oxygen absorber. This product creates similar low-oxygen packaging.

Multisorb alleges that two cases at issue here involve common questions of law and fact because both cases involve the same parties, attorneys, and Multisorb product. Multisorb contends that the same issues are involved in both cases because one of the central issues in Case 1 is whether an activator or accelerator is added to Multisorb's FreshPax CR, an issue that also will arise in Case 2. Multisorb argues that no accelerator is added to its product, but that the Pactiv patents require adding an accelerator to the oxygen absorber packet. Because the meaning of acceleration/activation must be decided in both cases, the suits should be consolidated, Multisorb contends.

Pactiv argues, without providing supporting case law, that the stayed claims in Case 1 should not be considered for the purposes of deciding the Motion to Consolidate. It contends the relevant comparison is between Multisorb's pending Counterclaims in Case 1 and Pactiv's Claims in Case 2. In the "live" Claims in Case 1, Multisorb alleges that Pactiv's Oxygen Absorber Product infringes on its '872 and '590 patents. In Case 2, the issue is whether Multisorb's FreshPax CR infringes on Pactiv's '921 and '195 patents. Those patents, Pactiv contends, have different priority dates, owners, and inventors.

Pactiv also contends that the two cases are not similar enough to warrant consolidation because the patents at issue in Case 2 involve the composition of its oxygen scavenger. On November 18, 2010, this Court granted Multisorb's Motion for a Protective Order in Case 1 covering the composition of the FreshPax CR oxygen scavenger. The Court found that disclosure of the composition was not necessary for Pactiv to prove that Multisorb's packaging system functions in the same way as Pactiv's.

Both sides accuse the other of gamesmanship. Multisorb contends that Pactiv is trying to get around this Court's stay and its protective order covering the disclosure of the composition of its FreshPax CR product. Pactiv contends that Multisorb is trying to confuse the Court into believing that all the Pactiv patents are related, and that both cases should be stayed pending reexamination. Multisorb also accuses Pactiv of violating a confidentiality agreement and FED. R.EVID. 408. In its Memorandum

in Opposition to Consolidation, Pactiv alleges that about a year ago, Multisorb was given a binder of Pactiv's entire portfolio of patents in the field of oxygen absorber technology and warned that Pactiv might assert those patents if the instant litigation could not be resolved. Multisorb officials and attorneys contend the binder was delivered as part of confidential settlement negotiations, and that no discussion was had as to the possibility of Pactiv asserting other patents. Pactiv, for its part, contends the publicly available patents were excluded from the confidentiality agreement and that regardless, it did not violate FED. R. EVID. 408 because mention of the ...

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