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Unified Messaging Solutions, LLC v. United Online

May 3, 2013

UNIFIED MESSAGING SOLUTIONS, LLC, PLAINTIFF,
v.
UNITED ONLINE, INC.,
JUNO ONLINE, SERVICES, INC.,
NETZERO, INC., AND
MEMORY LANE, INC. DEFENDANTS.



The opinion of the court was delivered by: Hon. Joan H. Lefkow

MEMORANDUM OPINION AND ORDER

Plaintiff, Unified Messaging Solutions, LLC ("UMS"), filed a five-count complaint ("the 343 case") against defendants, United Online, Inc.*fn1 , Juno Online Services, Inc., Netzero, Inc., and Memory Lane, Inc. (collectively referred to as "UOL defendants") alleging infringement of United States Patent Nos. 6,857,074; 7,836,141; 7,895,306; 7,895,313; and/or 7,934,148 ("the '148 patent"). The 343 case was reassigned to this court as part of a pending multidistrict litigation ("MDL 2371"), which includes claims by UMS against other defendants alleging infringement of one or all of the asserted patents in the 343 case. Presently before the court is the UOL defendants' motion to deconsolidate the 343 case from MDL 2371. For the reasons stated below, the UOL defendants' motion to deconsolidate is denied.

BACKGROUND

UMS is the exclusive licensee of the five patents in suit, all of which name Charles Bobo as the sole inventor. The patents share a common specification and stem from a common application filed in April 1995, to which they claim priority. In 2011 and 2012, UMS filed sixteen lawsuits alleging infringement of the '148 patent in the United States district courts for the Northern District of Illinois, the Eastern District of Missouri, and the Eastern District of Texas. UMS alleged that the defendants infringed the '148 patent by operating websites using a feature that enabled email or email-like communications with customers or users. One of the defendants in those lawsuits, Time Warner Cable Inc., moved for centralization of the pending lawsuit in the Northern District of Illinois pursuant to 28 U.S.C. § 1407.

On August 3, 2012, the United States Judicial Panel for Multidistrict Litigation ("JPML") created MDL 2371 and transferred the lawsuits pending in the Eastern District of Missouri and the Eastern District of Texas to the Northern District of Illinois and assigned all sixteen cases to the undersigned judge for coordination or consolidation of pretrial proceedings. The JPML ruled that centralization was proper:

[W]e find that these sixteen actions involve common questions of fact, and that centralization will serve the convenience of the parties and witnesses and promote the just and efficient conduct of the litigation. All actions concern factual questions surrounding the interpretation, validity and enforceability of the '148 patent owned by UMS and relating to webmail or similar communications on defendants' websites. Several of the actions also will share factual questions surrounding the interpretation, validity and enforceability of the remaining four patents in this patent family. We are persuaded that centralization will eliminate duplicative discovery, prevent inconsistent pretrial rulings (particularly on claim construction issues), and conserve the resources of the parties, their counsel and the judiciary.

MDL 2371, Dkt. 1 at 2.

The parties also notified the JPML of twenty-three related potential "tag-along actions" pending in the United States district courts for the District of Delaware, the Southern District of Florida, the Southern District of New York, the Eastern District of Texas, and the Western District of Texas. On August 16, 2012, the JPML issued a conditional transfer order transferring the "tag-along actions" to the Northern District of Illinois, which were assigned to the undersigned judge. The JPML recited that "[i]t appears that the action(s) on this conditional transfer order involve questions of fact that are common to the actions previously transferred to the Northern District of Illinois and assigned to Judge Lefkow." MDL 2371, Dkt. 2 at 1.

On September 10, 2012, the court entered an order delineating the rules of procedure for the pending cases and any subsequently filed cases. MDL 2371, Dkt. 16. The order specifically provided that "any related actions subsequently filed in this court . . . are CONSOLIDATED for pretrial purposes." MDL 2371, Dkt. 16 at 1. On September 11, 2012, the court entered an order stating that "[a]ny 'tag-along' actions later filed in, removed to, or transferred to this Court will be consolidated automatically with this action." MDL 2371, Dkt. 12.

On October 19, 2012, the court entered an agreed scheduling order, which required defendants to file certain materials jointly. Namely, the scheduling order limited UMS to asserting no more than 20 claims against defendants and provided that the defendants were limited to asserting no more than eight independent bases of invalidity per asserted claim. The scheduling order also required that defendants file joint claim construction briefs and scheduled a claim construction hearing for May 23, 2013. Because of the number of defendants, the court allowed defendants to file a 50-page opening claim construction brief and a 20-page reply. See MDL 2371, Dkt. 329. The scheduling order also largely stayed discovery until after the court's claim construction ruling.

On January 16, 2013, UMS filed the 343 case against the UOL defendants in the Northern District of Illinois.*fn2 Included with the complaint was an "Affidavit for Multi-District Litigation Proceeding" providing that "[t]he potential tag-along action shares common questions of fact and law with each of the cases transferred to MDL 2371" and that "this case includes nearly identical factual allegations and legal claims to those asserted in MDL 2371." 343 Case, Dkt. 4. On January 25, 2013, the Executive Committee for the Northern District of Illinois assigned the 343 case, in addition to the other newly filed cases in the Northern District of Illinois, to the undersigned judge.*fn3

LEGAL STANDARD

The JPML has the power to transfer to a district court "civil actions involving one or more common questions of fact [] pending in different districts . . . for coordinated or consolidated pretrial proceedings." 28 U.S.C. § 1407(a). The "coordinated or consolidated pretrial proceedings shall be conducted by a judge or judges to whom such actions are assigned by the judicial panel on multidistrict litigation." 28 U.S.C. § 1407(b). The transferee court exercises its discretion in determining whether to consolidate the transferred cases for pretrial purposes. See In re Bear Creek Tech., Inc., Patent ...


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